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LA.s^. ^ olAjuaX <X-v^.-fiX. A-'V.^u^A - "WvxxaJ*^ Xola-J* 

REPORT 



OF 



THE COMMISSIONERS APPOINTED TO REVISE THE 

STATUTES RELATING TO PATENTS, TRADE 

AND OTHER MARKS, AND TRADE 

AND COMMERCIAL NAMES, 



UNDER 



ACT OP CONGRESS APPROVED JUNE 4, 1898. 



FRANCIS FORBES, 

PETER STENGER GROSSCUP, 

ARTHUR P. GREELEY, 

Co m m issioners. 



WASHINGTON: 

GOVERNMENT PRINTING OFFICE. 

1902. 






LL 



;<r 



TABLE OF CONTENTS. 



REPORT OF THE COMMISSIONERS. 

THE REVISION OF THE PATENT LAWS. 

Page. 

Treaty obligations regarding the protection of inventions 6 

International Convention of Paris, 1883 7 

Patent Congress of Paris, 1878 8 

Preliminary steps leading to the adoption of the International Convention of 

Paris, 1883 8 

Conferences held under the Convention 11 

Advantages secured through the Convention 11 

Equal rights to foreign and domestic inventors 12 

Priority under the Convention 12 

Importation of patented articles 13 

Independence of patents 14 

Recapitulation of advantages secured by the Convention 14 

Progress of international agreement as to patents since the Convention. . . 15 

Modification of requirements as to working 15 

Changes in patent laws since the adoption of the Convention 16 

Date of adoption of patent laws at present in force 17 

Examination of Convention in detail 19 

Article 1 of Convention 19 

A rticle 2 of Convention 19 

Foreign executors and administrators 20 

Caveats 21 

Article 3 of Convention 23 

Article 4 of Convention 23 

Article 5 of Convention 26 

Other articles of Convention 26 

Treaty with Japan 27 

Changes in laws of the United States required to give full effect to the Conven- 
tion 27 

Patent laws of foreign countries 28 

Differences between patent laws of foreign countries and that of the United 

States 28 

Preliminary examination of applications for patent 28 

The question of novelty 29 

Distinction between a patent and a printed publication 29 

Provision by nonresident applicants for service on them in the United 

States 31 

Classes of invention excluded from protection 31 

Date given to patents in foreign countries 32 

Second patent granted to first inventor 33 

Revocation of patents 34 

Patent fees 34 

Working of patented invention — compulsory license 35 

Summary of recommendations 35 

A bill to give effect to treaty stipulations relating to letters patent for inven- 
tions 36 

Sec. 1 gives effect to article 4 of Convention of Paris, 1883 36 

Sec. 2 makes sec. 1 applicable to future amendments of the Convention . . „ 36 

Sec. 3 provides for application by foreign executor or administrator 36 

Sec. 4 provides for additional ofiicers before whom oath may be taken ... 36 

Sec. 5 repeals sec. 4902, R. S., caveats 37 

III 



IV CONTENTS. 

Page. 

A bill to revise the patent laws of the United States 37 

Sec. 1 amends sec. 4886, E. S 37 

Sec. 2 amends sec. 4920, R. S 37 

Sec. 3 amends sec. 4887, R. S 38 

Sec. 4 amends sec. 4904, R. S 38 

A bill respecting applicants for patents not residing in the United States 38 

Sec. 1 amends sec. 4893, R. S. Requires resident agent for service 38 

Sec. 2 amends sec. 4898, R. S 39 

TRADE AND OTHER MARKS AND TRADE OR COMMERCIAL NAMES. 

International Convention of Paris, 1883. Examination of Convention in detail . 41 

Article 2 of Convention 41 

Article 3 of Convention 42 

Article 4 of Convention 42 

Article 6 of Convention 42 

Article 7 of Convention 43 

Article 8 of Convention 44 

Article 9 of Convention 44 

Article 10 of Convention 44 

Article 11 of Convention 45 

New trade-mark statute required 45 

Agreements of Madrid , April 14, 1891 45 

Agreement for the prevention of false indications of origin 46 

Agreement concerning the international registration of trade-marks 47 

Treaties, conventions, and declarations between the United States and other 

single powers 47 

Russia 47 

Belgium 48 

France 49 

Austria-Hungary 50 

Germany 51 

Great Britain 51 

Brazil 52 

Servia „ 52 

Italy 53 

Spain 53 

Denmark 53 

Japan 54 

Foreign laws relating to trade and other marks 54 

Present necessity of registration of all marks used in commerce 57 

Regulation of commerce through the regulation of marks historically consid- 
ered - 58 

Constitutionality of proposed act 59 

Reasons for dissent of minority 61 

PROPOSITION FOR THE REGULATION BY THE CONGRESS OP THE UNITED STATES OF 

THE USE OF MARKS IN COMMERCE 63 

Arrangement of bill 64 

A bill to regulate and protect marks, trade-marks, commercial names, and 

symbols used in commerce, and to enforce treaties regarding the same 64 

. Title stating object of bill 66 

Sec. 1. Short title by which act may be known 65 

2. Object of act 65 

3. Country of origin and quantity to be marked 65 

4. Foods and medicines bearing deceptive marks 65 

5. Persons entitled to exclusive use of mark — Liability for misuse.. 66 

6. Registration of certain marks permitted — What denied 66 

7. Form of application — Form of affidavit to accompany the same — 

Drawing — Register of addresses of nonresidents 67-68 

8. Priority under conventions 68 

9. Examination of application — Publication of mark — Form of cer- 

tificate of registration — Date of certificate — Duration of registra- 
tion — Certificate may issue to assignee 69 

10. Notice of refusal of registration 70 

11. Notice to interested parties — Opposition to registration 70 



CONTENTS. V 

A bill to regulate and protect marks, trade-marks, etc. — Continued. v&ge. 

Sec. 12. Interference or opposition — Procedure 70 

13. Cancellation of registration 71 

14. Appeal from examiner of trade-marks to commissioner 71 

15. Appeal from commissioner to court of appeals of District of 

Columbia 71 

16. Notice of appeal 71 

17. Proceedings upon appeal 71 

18. Determination of appeal and its effects 72 

19. Appeal from court of appeals of District of Columbia to the 

Supreme Court of the United States 72 

20. Eegistration obtainable by bill in equity 72 

21. Renewal of registration 72 

22. New application for registration of mark already registered 73 

23. Fraudulent registration — Damages 73 

24. Transfer of trade-marks 73 

25. Registered trade-marks must he marked as such 74 

26. Penalty for falsely marking an unregistered trade-mark 75 

27. Actions for infringement — Damages 74 

28. Pleadings and proofs in such actions 74 

29. Power of court to grant injunction and assess damages — To 

impanel jury 75 

30. Application for" registration equivalent to use 75 

31. Offenses against trade-marks 76 

32. Seizure of articles bearing an imitation of a registered trade-mark 

or of a commercial name 76 

33. Articles bearing an imitation of a registered trade-mark or a com- 

mercial name forbidden entry 77 

34. Fees— Costs 77 

35. Saving clause 78 

36. Construction of terms — Territory — State — Person — Number — Gen- 

der — Applicant — Registrant — Infringement — Imitation — Af- 
fixed — Knowingly — Country of origin 78 

37. Construction of act 79 

38. Pending applications 79 

39. Registrations heretofore made — Act of 1870 — Act of 1881 . - 80 

40. Registrations by residents of Hawaii ^ 80 

41. International registration of trade-marks 80 

42. Amendatory and repealing statutes 81 

43. Repeal 81 

44. When act to take effect 82 

Notes on bill 82 

DISSENTING REPORT WITH REFERENCE TO THE REVISION OP THE TRADE-MARK LAW. 

No reference to trade-marks in the Constitution 89 

Commercial conditions in the colonies 90 

Purpose of the union 90 

Development of trade-mark law of Great Britain 91 

Jefferson's report on trade-mark protection 92 

Development of trade-mark law in the United States 93 

Early trade-mark laws of the States 94 

Trade-mark treaty with Russia 95 

Trade-mark treaty with Belgium 96 

The treaties w4th Russia and Belgium 97 

Proposed legislation to give effect to trade-mark treaties 98 

Legislation for the protection of domestic trade-marks against infringement 

by foreigners 99 

Trade-mark convention with France 101 

Trade-mark conventions with other foreign nations 101 

Trade-mark law of 1876 102 

Trade-mark law as defined by the acts of 1870 and 1876 103 

Trade-mark conventions with foreign nations 103 

Decision of the Supreme Court in the trade-mark cases 103 

Effect of the decision of the Supreme Court 103 

Trade-mark act of 1881 102 

Trade-mark arrangements with foreign nations 105 

Present trade-mark laws of the States 106 



VI CONTENTS. 

Page. 

Provisions 6i the trade-mark act of 1881 — The common law of trade-marks. . . 106 

Decisions from which the common law of trade-marks is determined ' 107 

Classes of trade-mark cases — Unfair competition 109 

Cases involving the property right to a trade-mark 110 

Necessity for registration of trade-marks Ill 

Trade-mark legislation in Great Britain 113 

Advantage of registration of trade-marks to the public 114 

Protection to trade-marks under the act of 1881 114 

Constitutional power of Congress with respect to trade-marks 115 

Relation of trade-marks to commerce 116 

Trade-mark treaties 117 

Section 11 of the act of July 24, 1897 118 

Importance to commerce of the protection of trade-marks 118 

Decisions of United States courts on trade-marks 119 

Common law of the United States 120 

Basis of the common law of trade-marks 121 

Necessity for a general trade-mark law 122 

Power of Congress to regulate trade-marks 124 

Eegulation of interstate trade-marks within Congressional control 124 

A bill to revise the laws of the United States relating to trade-marks. .-. 126 

Sec. 1. Who may register a trade-mark 126 

2 Application for registration : 127 

3. Declaration 128 

4. Designation by foreigners of resident on whom service may be 

made 129 

5. What marks may be registered 130 

6. Priority under Convention 130 

7. Examination of application 131 

8. Reexamination of application after rejection 131 

9. Abandonment of application 132 

10. Interference 132 

11. Appeal from examiner to Commissioner of Patents 133 

12. Appeal from Commissioner to court of appeals of District of 

Columbia 134 

13 Transfer of property right in trade-mark 135 

14. Form of certificate of registration 135 

15. Duration of certificate of registration 135 

16. Fees 136 

17. Sections 4935 and 4936 made applicable to trade-mark fees 137 

18. Commissioner of Patents may establish regulations 138 

19. Registration of trade-mark legal notice of claim of ownership. 

Action on the case for damages. Increasing same 138 

20. Jurisdiction of courts in cases arising under act 139 

21 Injunction. Accounting. Increasing damages 140 

22. Destruction of labels of defendant. Service of injunction any- 

where in United States may be enforced in any district 140 

23. Suit can not be maintained on a trade-mark used in any unlaw- 

ful business 141 

24. Saving clause ^ 141 

25. Trade-mark used before March 3, 1881, not affected by act ■ 142 

26. Imported merchandise not admitted to entry if bearing infringing ' 

mark 142 

27. United States includes all territory under its jurisdiction 143 

28. When act shall take effect. Repeal 143 



APPENDIX TO R.EPORT. 



Page. 
Chap. I. — Act providing for the appointment and duties of the commis- 
sioners 145 

II. — Convention and agreements especially mentioned in the act 

providing for the appointment of commissioners 146 

Sec. 1. Convention for the protection of industrial prop- 
erty, concluded at Paris, March 20, 1883— Final 
protocol — Proclamation by President, June 11, 
1887 146 

2. Supplemental convention concluded at Madrid 

April 15, 1891, amending convention of Paris, 
concluded March 20, 1883 — Proclamation by 
President, June 22, 1892 156 

3. Agreement concerning the suppression of false 

indications of origin on merchandise, concluded 

at Madrid April 14, 1891 158 

4. Agreement concerning the international registra- 

tion of trademarks, concluded at Madrid April 
- 14,1891 160 

5. Rules for carrying into effect the agreement con- 

cerning the international registration of trade- 
marks, concluded at Madrid April 14, 1891 163 

6. Report of the International Bureau on the inter- 

national registration of trademarks for the 
years 1893-1897, including forms used in the 

international registration of trademarks 166 

III. — Protocols adopted at the Brussels conference of 1897 182 

Sec. 1. First final protocol to Convention of Paris, March 

20,1883 182 

2. Second final protocol to agreement concluded at 
Madrid April 14, 1891, concerning the interna- 
tional registration of trademarks 185 

IV. — Proposition for the amendment of the Convention concluded 
at Paris March 20, 1883, presented by the United States to 

the Brussels conference 189 

V. — Report of the United States delegates to the Brussels confer- 
ence of 1897 192 

VI. — Report of the British delegates to the Brussels conference of 

1897 214 

VII. — Resolutions adopted by the Patent Congress held at the Vienna 

Exposition of 1873 224 

VIII. — Correspondence and reports relating to the conferences of 1880, 

1883, 1886,and 1890 228 

Sec. 1. Correspondence relating to the international con- 
ference at Paris in 1880 228 

2. Report of delegate from the United States to the 

conference at Paris in 1880 235 

3. Report of delegate from the United States to the 

conference held at Rome in 1886 243 

4. Report of delegates from the United States to the 

conference held at Madrid in 1890 245 

VII 



Vllt CONTENTS OF APPENDIX. 

Page. 
Chap. IX. — Conventions and treaties relating to patents and trademarks 

between foreign countries 254 

Sec. 1. Convention of Montevideo (between South Amer- 
ican countries ) concerning patents 254 

2. Convention of Montevideo (between South Amer- 

ican countries) concerning trademarks 255 

3. Convention concluded December 6, 1891, between 

Germany and Austria-Hungary concerning indus- 
trial property 256 

4. Conventions concluded between Germany and Italy 

and Germany and Switzerland concerning indus- 
trial property 258 

5. Convention between Switzerland and Russia con- 

cerning trademarks 260 

6. Trademark treaties and conventions between for- 

eign countries 261 

X. — Opinion of the Attorney-General of the United States upon the 
construction of the articles of the International Convention 

for the Protection of Industrial Property 265 

XI. — Laws of certain foreign countries giving effect to the provisions 
of the International Convention concluded at Paris March 
20, 1883, as regards priority, the registration of trademarks, 
and the protection of inventions shown at international 

expositions 269 

Sec. 1. Brazil: (a) Patents; (6) Trademarks 269 

2. Ceylon: Patents 270 

3. Denmark: (a) Patents; (6) Trademarks 270 

4. France: Patents 272 

5. Great Britain: Patents, designs, and trademarks. 273 

6. India: Patents 274 

7. Italy: Patents, designs, and trademarks 275 

8. Japan: (a) Patents; (6) Trademarks 275 

9. Malta: Patents 276 

10. Netherlands : Trademarks 276 

11. New South Wales: Patents, designs, and trade- 

marks 277 

12. New Zealand: Patents, designs, and trademarks. 278 

13. Norway : ( a ) Patents ; ( 6 ) Trademarks 280 

14. Orange Free State: Patents 281 

15. Portugal: (a) Patents; (6) Trademarks 281 

16. Queensland: Patents 282 

17. South African Republic: Patents 283 

18. Spain: Patents, designs, and trademarks 284 

19. Sweden : ( « ) Patents ; ( 6 ) Trademarks 285 

20. Switzerland: Patents 286 

21. Tasmania: Patents, designs, and trademarks 287 

22. Victoria: Patents, designs, and trademarks 288 

23. Western Australia: Patents, designs, and trade- 

marks 289 

XII. — Law of Canada as to oath by applicant for patent 291 

XIII. — Foreign countries w^hich have patent laws 292 

XIV. — Laws of certain foreign countries requiring nonresident appli- 
cants for patent and for registration of trademarks to place 
themselves within the jurisdiction of the courts of the 

country 294 

Sec. 1. Austria: Patents 294 

2. Brazil: Patents 294 

3. Canada: Patents 295 

4. Ceylon: Patents 295 

5. Denmark: {a) Patents; (6) Trademarks 295 

6. Finland: {a) Patents; (6) Trademarks 296 

7. Germany: (a) Patents; (6) Trademarks 297 

8. Great Britain: Trademarks 297 

9. Greece: Trademarks 298 

10. Hungary: Patents 298 

11. India: Patents 299 

12. Japan: (a) Patents; (6) Trademarks 299 



CONTENTS OF APPENDIX. IX 

Chap. XIV. — Laws of certain foreign countries requiring nonresident appli- 
cants for patents, etc. — Continued. Page. 
Sec. 13. Luxemburg: (a) Patents; (6) Trademarks 300 

14. Mysore: Patents 300 

15. Negri Sembilan : Patents 300 

16. Netherlands: Trademarks 301 

17. Norway: (a) Patents; (&) Trademarks 301 

18. Russia: Patents 302 

19. South African RepubHc: Trademarks 302 

20. Straits Settlements : Patents 303 

21. Sweden: (a) Patents; (6) Trademarks 303 

22. Switzerland: Patents 304 

23. Turkey: Patents 304 

XV. — Laws of certain foreign countries excluding from patent pro- 
tection certain classes of invention 306 

Sec. 1. Argentine Republic 306 

2. Austria 306 

3. Denmark 307 

4. Finland 307 

5. France 307 

6. Germany 308 

7. Hungary 308 

8. Italy 308 

9. Japan 309 

10. Luxemburg 309 

11. Norway 309 

12. Peru 310 

13. Portugal 310 

14. Russia 310 

15. Spain.. 311 

16. Sweden 311 

17. Switzerland 311 

18. Tunis 312 

19. Turkey 312 

20. Uruguay 312 

21. Venezuela 312 

XVI. — Laws of certain foreign countries providing for the grant to 

the true inventor of a patent for an invention for which a 

patent has already been granted to another 313 

Sec. 1. Austria 313 

2. Ceylon 314 

3. Finland 314 

4. Great Britain and British colonies 314 

5. India and Mysore 315 

6. Japan 315 

7. Orange Free State 316 

8. South African Republic 316 

9. Straits Settlements 316 

XVII. — Laws of certain foreign countries respecting compulsory 

licenses 318 

Sec. I.Austria 318 

2. BoHvia 319 

3. Denmark 319 

4. Ecuador 320 

5. Finland 320 

6. Germany 320 

7. Great Britain and British colonies 321 

8. Hungary 321 

9. Japan 322 

10. Luxemburg 322 

11. Malta 323 

12. Norway 323 

13. Sweden 323 

14. Switzerland .: 324 

XVIII. — Treaty agreements relating to trademarks between the United 

States and foreign nations 325 

Sec. I.Austria-Hungary 325 

2. Belgium 326 



X CONTENTS OF APPENDIX. 

Chap. XVIII. — Treaty agreements relating to trademarks, etc.— Continued. Page. 

Sec. 3. Brazil 328 

4. Denmark 329 

5. France 330 

6. Germany 331 

7. Great Britain 331 

8. Italy 332 

9. Japan 332 

10. Netherlands 334 

11. Russia 335 

12. Serbia 336 

13. Spain 337 

M.Switzerland l 337 

XIX. — Foreign countries which provide by law for the registration of 

trademarks 340 

XX. — Extracts from the report dated March 16, 1888, of the depart- 
mental committee appointed by the (British) board of trade 
on February 24, 1887, "to inquire into the duties, organiza- 
tion, and arrangements of the patent oflfice under the 
Patents, Designs, and Trademarks Act, 1883 (46 and 47 Vict., 

C. 57), so far as relates to trademarks" 342 

XXI. — Legislation providing for the registration and protection of 

collective trademarks 349 

(A) Legislation of certain foreign countries in reference to 
collective trademarks 349 

Sec. I.France 349 

2. Germany 349 

3. Great Britain 350 

4. Japan 350 

5. Portugal 350 

6. Switzerland 351 

(B) Legislation of States of the United States in reference to 

the registration and protection of collective trademarks 351 

XXII. — Trademark law of Germany with notes thereon 352 

XXIII. — Trademark law of France with notes thereon 363 

XXIV. — Laws of certain foreign com^tries which require registration 
as a condition precedent to securing full protection for 

trademarks 373 

Sec. 1. Argentine Republic 373 

2. Austria 373 

3. Belgium 373 

4. Brazil 373 

5. Bulgaria 374 

6. Canada 374 

7. Chile 374 

8. Congo Free State J- 374 

9. Denmark 374 

10. Finland 375 

11. France 375 

12. Germany 375 

13. Great Britain and British colonies 375 

14. Greece 376 

15. Italy 376 

16. Japan 376 

17. Luxemburg 377 

18. Mexico 377 

19. New South Wales 377 

20. Orange Free State 377 

21. Portugal 377 

22. Roumania 378 

23. Russia 378 

24. Serbia 378 

25. Switzerland 378 

26. Turkey 378 

XXV. — Legislation and proposed legislation in the United States con- 
cerning trademarks, as shown by the Congressional Globe 

and Congressional Record from the Thirty-sixth Congress 

to the Fifty-fifth Congress 380 



REPORT 



OF THE 

COMMISSIONERS APPOINTED TO REVISE THE LAWS 

RELATING TO PATENTS, TRADEMARKS, AND 

TRADE NAMES, WITH REFERENCE 

TO EXISTING CONVENTIONS 

AND TREATIES. 



To the Congress of the United States of America: 

We, the commissioners appointed by the President under the act 
entitled "An act appointing commissioners to revise the statutes 
relating to patents, trade and other marks, and trade and commercial 
names," approved June 4, 1898, have the honor to submit herewith 
the report called for by said act. 
Respectfully, 

Francis Forbes. 
Peter Stenger Grosscup. 
Arthur P. Greeley. 
November 27, 1900. 

3 



EEFORT. 



To the Congress of the United States of America : 

We, the commissioners appointed by the President of the United 
States under the act entitled ''An act appointing' commissioners to 
revise the statutes relating to patents, trade and other marks, and 
trade and commercial names," have the honor to submit the following 
report and accompanying bills. 

In order that we might have the fullest possible expression of the 
views of those interested in the patent system and in the question of 
the protection of trademarks, we issued a circular letter inviting 
expressions of views on these questions, sending it to commercial and 
manufacturing organizations throughout the country, as well as to the 
members of the patent profession, who are necessarily in close touch 
with the patent and trademark interests of the country. We also 
held public hearings in Chicago, New York, and Washington, which 
were largely attended and at which a full opportunity was given for 
the expression of the views of all persons interested in the questions 
before the commission for consideration. We have, in making the 
recommendations contained in this report, taken into consideration the 
views expressed on these questions by the American Bar Association, 
the Manufacturers' Association of America, The Pharmaceutical Asso- 
ciation, the United States Trade-Mark Association, the Association of 
Retail Druggists, and, in general, the views of any and all persons who 
have presented their views to us, either orally or by letter. 

These hearings were had and views expressed without reference to 
any specific bill providing for changes in the patent or trademark 
laws. 

While the views expressed to us are not in all respects in agreement, 
we have found that there is general agreement on the following propo- 
sitions : 

1. That the International Convention signed at Paris, March 20, 1883, 
is advantageous to the people of this countr}^, and the United States, 
as a party thereto, should provide for carrying out its provisions in 
good faith. 

2. That the treaty relations of the United States, the interests of 
American manufacturers engaged in domestic trade, and particularly 
the interests of manufacturers engaged in foreign trade, demand a 
national trademark law which, so far as the Congress has the power 

5 



REVISION OF STATUTES RELATING TO PATENTS, ETC. 



to do under the Constitution, shall regulate and protect trademarks 
used in commerce within the United States more satisfactorily than is 
now possible. 

It was also very generally agreed that if it appeared that the privi- 
lege of filing caveats under the same conditions as they are permitted 
to be filed by United States citizens could not be properly given to 
residents of foreign countries, the caveat should be abolished, it being 
generally considered that the caveat is at the present time of little or 
no importance. 

The changes which we recommend should be made in the patent laws ^ 
are embodied in three proposed bills which accompany this report. 
None of the proposed changes affect the general provisions of the 
patent law. In reference to trademarks, however, it appeared clear 
that there is a necessity for a complete revision of the existing law, and 
the single proposed bill on this subject which accompanies this report 
is submitted as a substitute for the present trademark law.^ 

The questions of the revision of the patent law, on the one hand, and 
of the laws relating to trademarks and commercial names, on the other, 
are so materially different, that we have considered them separately in 
this report, taking up first the question of the revision of the patent law. 

THE REVISION OF THE PATENT LAW. 

TEEATY OBLIGATIONS REGARDING THE PROTECTION OF INVENTIONS. 

We have found it desirable in considering the question of revision 
of the patent law to first consider what changes in the law are needed 
to give full force and effect to the treaty obligations which the United 
States has undertaken touching the protection of inventions made by 
the subjects or citizens of certain foreign countries. 

The most important diplomatic agreement to which the United 
States is a party, both as regards the interests of its own citizens and 
the subjects or citizens of foreign countries, is the International Con- 
vention for the Protection of Industrial Property, concluded at Paris, 
March 20, 1883, to which the United States adhered May 30, 1887.^ 

The following foreign nations are at present parties to this Con- 
vention : 

Belgium; Brazil; Denmark, with the Faroe Islands; Dominican 
Republic; France, with Algeria and the French colonies; Great Brit- 
ain, with New Zealand and Queensland; Italy; Japan; the Netherlands, 
with Dutch East Indies, Surinam, and Curasao; Norway; Portugal, 
with the Azores and Madeira; Serbia; Spain; Sweden; Switzerland; 
Tunis. 

The onl}^ other diplomatic arrangement with a foreign nation respect- 
ing patents is: 

The treaty of commerce and navigation concluded between the 
United States and Japan, November 22, 1894, Article 16 of which 
relates to "patents, trademarks, and designs," which was followed by 
a convention '^ relating to patents, trademarks, and designs" between 
the same nations, concluded January 13, 1897.* 

The treaty with Japan is not now of special importance to the pres- 
ent inquiry. The rights which it secured in Japan to citizens of the 

^ See page 36. ^Appendix, Chap. II, sec. 1, p. 146. 

^ See page 65, also page 126. * Appendix, Chap. XVIII, sec. 9, p. 332. 



EEPORT OF COMMISSION PATENTS. i 

United States, so far as patents are concerned, were secured by the 
adhesion of Japan to the International Convention, above referred to, 
and by a modification of the patent law of that country. 

INTERNATIONAL CONVENTION OF PARIS, 1883. 

In order to understand the purpose and meaning of this Convention, 
it is desirable to take into consideration the causes which led to an 
appreciation of the desirability of an international agreement respect- 
ing the protection of patents for inventions and other industrial prop- 
erty and the part taken b}^ the United States in the efforts which 
culminated in its conclusion in 1883. 

In the year 1873, an international exposition was held at Vienna. 
In connection with this exposition a call was issued for an international 
congress for the consideration of the subject of patents. Prior to that 
time the unsatisfactory condition of legislation relating to patents in 
the European countries had been the theme of discussion in many 
quarters. 

The congress which assembled under this call included a very gen- 
eral representation of the countries which at that time were interested 
in the development and protection of invention, the German element, 
as would naturally be expected from the locality in which the con- 
gress was held, being largel}^ predominant. 

The United States was represented at this congress by the Hon. 
J. M. Thacher, then Assistant Commissioner of Patents. 

In an unofficial statement of the proceedings of this congress, 
which was in session for five days and after a very full discussion 
adopted resolutions recommending to the different countries there 
represented a basis of reform in patent legislation throughout the 
world, Mr. Thacher said: 

It was the general, I may say universally expressed, opinion in the congress at 
Vienna that in order to secure the advancement of the mechanic arts in their own 
countries and to prevent the emigration of their most skilled artisans it was neces- 
sary to secure a reform in European patent legislation. 

Count Andrassy, the premier of the Austrian Government, put it in a very few 
words during an interview with the permanent committee when he said: 

' ' I look to England and I look to America, and I find that they are the foremost 
countries of the world in manufactures. I find also, upon examining their laws, 
that they have the best patent systems in the world. 

* ' Putting these two facts together, I conclude that the one is dependent upon th 
other, and therefore I am in favor of a thorough reorganization and revision of the 
patent laws of Austria. ' ' 

This feeling has grown from year to year and from one international exposition 
another until I think I am not extravagant in saying that there is a general agreement 
among leading men — thoughtful men — not only in England, but upon the continent 
of Europe, that a revision of their patent laws is absolutely necessary. * * * 

Since the adjournment of the congress I have been in correspondence with the 
permanent secretary of the executive committee, Mr. Carl Pieper, civil engineer, of 
Dresden, and I am assured that the influence of the discussions in the congress and 
the resolutions there adopted are already being felt in Europe. 

You are aware that Switzerland never has had a general patent law and that 
Holland several years ago abolished her patent law. One of the fruits of this con- 
gress in Vienna is a fresh discussion in Holland of the desirability of reestablishing 
their patent law, or a better one, it is to be hoped. Another is the discussion in 
Switzerland of the proposition to establish a patent system there; -and one of the 
latest communications from Mr. Pieper informs me that he is now at work as a 
"missionary," as he terms it, in his own country, organizing associations every- 
where and endeavoring to secure the election of such men to their next legislative 
body as will favor a careful revision of the patent system of Germany. 

S. Doc. 20 2* 



8 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

The resolutions adopted at this congress ^ set forth the views of its 
members as to the importance of the protection of inventions by the 
grant of patents, stating the reasons why such protection is of import- 
ance. The particular resolutions relating to an international under- 
standing are as follows (translation): 

III. Considering the great differences in present patent administration and the 
altered international commercial relations, the necessity of reform is evident; and it 
is of pressing moment that Governments should endeavor to bring about an interna- 
tional understanding upon patent protection as soon as possible. 

IV. The congress empowers the preparatory committee to continue the work com- 
menced by this first international congress, and to use all their influence that the 
principles'^ adopted be made known as widely as possible and carried into practice. 

While the effect of this congress was of undoubted importance, and 
led to some changes in the patent laws of European countries, it did 
not result at once in the international arrangement sought. 

THE PATENT CONGRESS OF 1878 AT PARIS. 

In connection with the international exposition of 1878 at Paris, 
another patent congress was held.^ Germany, Luxemburg, Norway, 
Sweden, Spain, Russia, and the United States were represented at this 
congress, as well as France. The purpose of the congress was indica- 
ted by its president, M. Tesserenc de Bort, the French minister of 
agriculture and commerce, in the following words (translation) : 

Industrial property will never be truly protected until there prevail everywhere 
simple, uniform, and definite regulations, forming between the nations a kind of 
conventional plan, a sort of mutual insurance against the infringer and the counter- 
feiter. 

The plan of an international agreement took more definite shape at 
this congress, which created a permanent commission charged with 
the duty of devising means for carrying the views of the congress 
into effect. Mr. Forbes, of this commission, assisted at this congress. 

PRELIMINARY STEPS LEADING TO THE ADOPTION OF THE INTERNA- 
TIONAL CONVENTION OF PARIS, 1883. 

The French Government was induced to take the initiative in calling 
an international official conference for the consideration of the plan 
for a convention for the international protection of industrial property. 
On the invitation of that Government, the following countries were 
represented at this conference, either by their ministers at Paris or 
by special delegates: 

Argentina, Austria-Hungary, Belgium, Brazil, United States, France, 
Great Britain, Guatemala, Italy, Luxemburg, The Netherlands, Por- 
tugal, Russia, Salvador, Norway, Switzerland, Turkey, Uruguay, 
Venezuela. 

The conference met at Paris November 4, 1880, and remained in 
session until November 20, 1880. 

The basis of discussion was a report of a draft convention by M. 
Ch. Jagerschmidt, a French delegate to the conference. The draft is 
here given in full as throwing light upon the theory upon which the 

1 Appendix, Chap. VII, p. 224. ^ Appendix, Chap. VIII, sec. 1, p. 228. 



REPORT OF COMMISSION PATENTS. 9 

convention was drawn and the evils which it was designed to obviate. 
The draft is as follows (translation) : 

Article 1. Austria-Hungary, Belgium, Brazil, the United States of America, 
France, the United Kingdom of Great Britain and Ireland, Italy, Luxemburg, The 
Netherlands, Portugal, Kussia, the United Kingdom of Sweden and Norway, Switzer- 
land, Turkey, Uruguay and Venezuela are formed into a state of union for the 
protection of industrial property. 

Art. 2. The subjects and citizens of each of the contracting States shall reciprocally 
enjoy in all the other States of the Union, in matters of patents of invention, indus- 
trial designs or models, marks of manufacture or of commerce and the commercial 
name, the advantages that their respective laws grant at present or shall hereafter 
grant to natives. They shall have the same protection as these latter and the same 
legal recourse against all injury done to their rights, upon the sole condition of com- 
plying with the formalities imposed upon natives bv the domestic legislation of each 
State. 

Art. 3. Every deposit of an application for patent of invention, of an industrial 
design or model, of a mark of manufacture or of commerce, regularly effected in any 
one of the contracting States, shall secure for the depositor a right of priority of reg- 
istration in all the other States of the Union during a period of beginning 

from the date of the deposit. 

Art. 4. The owner of a patent of invention shall have the right to introduce into 
a country where the patent shall have been granted him, articles manufactured in 
any one of the contracting countries without that introduction being a cause of for- 
feiture of the patent. 

Art. 5. The ownership of industrial designs or models, and of marks of manufac- 
ture and of commerce, shall be considered in all the States of the Union as lawfully 
acquired by those who make use of such designs or models and marks of manufac- 
ture and commerce, conformably to the laws of the country of origin. 

Art. 6. Every production bearing, unlawfully, either the mark of a manufacturer 
or of a merchant located in one of the countries of the Union, or an indication of 
origin in such country, shall be prohibited entry ir all the other contracting States, 
excluded from transit and from storage, and may be subject to seizure followed, if 
necessary, by a suit in court. 

Art. 7. The deposit of any mark of manufacture or of commerce shall be permitted 
in all the States of the Union, at the risk and peril of the depositor, w^hatever may 
be the nature of the product to which the mark is applied. 

Art. 8. The ownership of a commercial name shall be guaranteed in all the States 
of the Union without distinction of nationality and without obligation of deposit, 
whether or not it forms part of a mark of manufacture or of commerce. 

Art. 9. The high contracting parties agree to accord a temporary protection to 
patentable inventions, to industrial designs or models, as well as to marks of manu- 
facture and of commerce for the productions, which may figure at official or officially 
recognized international exhibitions. 

Articles claimed to be infringements may be seized in the inclosure of the expo- 
sitions. 

Art. 10. Each one of the high contracting parties agrees to establish a special 
service of industrial property and a central depot, for communicating to the public 
patents of invention, industrial designs or models, and marks of manufacture and 
of commerce. 

Art. 11. An international organization, placed under the high authority of the 
Swiss Confederation, shall be charged, under the title of the International Bureau of 
Industrial Property, with the duty of assembling, arranging, and publishing informa- 
tion of all kinds relative to patents of invention, industrial designs or models, and 
marks of manufacture and commerce. 

The expense to which this institution shall give rise shall be borne by all the 
Governments of the contracting States. 

The International Bureau shall publish a journal of industrial property in the 

language, by the aid of documents which should be placed at its disposition 

by the said Governments. 

Art. 12. The present convention shall be submitted to periodical revisions for the 
purpose of introducing improvements of a kind to perfect the system of union of the 
contracting States. 

For that purpose, conferences shall take place successively in the capital of each of 
the contracting States, between the delegates of said States. 

The next meeting shall take place in at . 



10 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Art. 13. The high contracting parties respectively reserve the right to make sepa- 
rately between themselves special agreements for the protection of industrial property 
in so far as the^^e agreements shall not interfere with the provisions of the present 
Convention. 

Art. 14. The States which have not taken part in the present Convention shall be 
admitted to adhere to the same upon their application. 

This adhesion shall be notified through the diplomatic channel to that one of the 
contracting States in which the last conference was held, and by that State to all the 
others. 

It shall convey, of full right, accession to all the clauses and admission to all the 
advantages stipulated by the present convention. 

Art. 15. The present Convention shall be put into execution from , and shall 

remain in force during an indefinite period, until the expiration of a year from the 
day upon which the denunciation shall be made. 

This denunciation shall only produce its effect as regards the State making it, the 
convention remaining executor}^ for the other contracting parties. 

Art. 16. The present Convention shall be ratified and the ratifications exchanged 
at Paris at as early a date as possible. 
- In witness whereof, etc. 

The draft was modified in language and added to. An article was 
inserted giving residents and persons having commercial establish- 
ments in one of the States of the Union the same rights under the 
Convention as citizens. Article 3 of the draft became article 4 of the 
Convention, and was greatly enlarged.^ Article 4 of the draft was 
modified bv adding thereto: '''The patentee, however, shall be subject 
to the obligation of working his patent conformably to the laws of 
the country into which he introduces the patented article." 

New articles (6 and 7) in regard to registration of trademarks were 
added, and a new article (9) in regard to seizure of products bearing 
illicitly trademarks and commercial names was also added. 

A final protocol, explanatory of the articles of the Convention, was 
also added. The amended articles will be considered hereafter. 

The United States was represented at this conference by the Hon. 
James O. Putnam, United States minister to Belgium,^ who took part 
only so far as to obtain the insertion of section 4 of the protocol, 
which declared that it is understood that the provisions of the Con- 
vention shall not be applicable except within the limits of the con- 
stitutional powers of the high contracting parties. 

The form of convention adopted was applicable, in the case of 
patents, to the European system under which on deposit of an appli- 
cation for a patent it is granted without examination for novelt}?-; and, 
in the case of trademarks, to the system under which the deposit of 
the mark is required in order to obtain an}^ right whatever. 

The draft convention adopted b}^ the conference of 1880 was sub- 
mitted to the participating States, and a second conference was held at 
Paris in 1883, at which the following nations were represented: 

Argentina, Austria-Hungary, Belgium, Brazil, United States, 
France, Great Britain, Guatemala, Ital}^, Luxemburg, The Netherlands, 
Portugal, Russia, Salvador, Sweden, Switzerland, Turkey, Uruguay, 
Venezuela. 

The United States was represented by the Hon. Levi P. Morton, 
minister to France, who took no part in the discussion. 

Section 4 of the protocol, as drafted at the prior conference, was 
wholly omitted. 

No changes were made to conform the Convention to the patent sys- 
tem of the United States; indeed, there was no need of such modifica- 

1 Appendix, Chap. II, sec. 1, p. 146. ^ Appendix, Chap. VIII, sec. 2, p. 235. 



REPORT OF COMMISSIOK PATENTS. 11 

tions, since the laws of the United States were so liberal that nothing 
could have been added by the Convention to the rights of foreigners in 
tlie United States. 

The Convention was ratified at Paris June 6, 1884, but was not 
adhered to by the United States until March 29, 1887, and proclaimed 
by the President June 11, 1887. Still our Government sent a delegate 
to the first conference under it, held at Rome in 1886. 

CONFERENCES HELD UNDER THE CONVENTION. 

Conferences looking toward amendment ot the Convention have from 
time to time been held, and at all of these the United States has been 
represented. At the conference held at Rome in 1886, our minister to 
Italy, Hon. J. B. Stallo, was in attendance, though it was not until the 
following year that the United States formally announced its adhesion 
to the Convention.^ 

While the United States was ably represented at these various con- 
gresses and conferences, at none of them, except the congress at 
Vienna in 1873, was there present on behalf of the United States any 
delegate qualified by the close and thorough knowledge of our patent 
system, which can be acquired only by experience, to properly present 
to the European delegates its principles and advantages. It not un- 
naturally happened that the Convention as adopted was drawn with 
less reference to the peculiarities of our system and the needs of our 
citizens than might otherwise have been the case. 

At the conference held under the Convention at Madrid in 1890 the 
United States was represented not only by Hon. Thomas W. Putnam, 
at that time minister to Spain, but also by delegates thoroughl}^ famil- 
iar by long experience with our patent system. These delegates were 
Mr. Forbes, a member of this commission, and Mr. F. A. Seely, at 
that time an official of the United States Patent Office, and since 
deceased. The report of these delegates is found in the appendix.^ 

At the conference held under the Convention at Brussels in Decem- 
ber, 1897, the United States was represented by Hon. Bellamy Storer, 
United States minister to Belgium, and by Mr. Forbes. The report 
of the delegates is annexed hereto.* 

ADVANTAGES SECURED THROUGH THE CONVENTION. 

While it must be admitted that the Convention as it stands to-day 
does not call for full reciprocity in patent matters, does not require 
the foreign nations which are parties to it to extend the same privi- 
leges to citizens of the United States which are extended by our laws 
to foreigners, and has not led to doing away with some of the require- 
ments of foreign patent laws which have seemed exceedingly onerous 
to our citizens who have sought to protect their inventions in foreign 
countries, it can not be questioned that it secures for our citizens 
important advantages, the value of which is bound to be more fully 
appreciated as the rapidly growing foreign market for our manufac- 
tures and inventions develops. 

Some of the advantages in reference to patents secured to our citi- 
zens by this Convention as originally adopted are pointed out in the 

1 Appendix, Chap. VIII, sec. 3, p. 243. 

2 Appendix, Chap. VIII, sec. 4, p. 245. 
^Appendix, Chap. V, p. 192. 



12 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

report of the Hon. James O. Putnam, before referred to.^ It is impor- 
tant to consider the advantages secured to our citizens by the Conven- 
tion as it stands to-day. 

EQUAL RIGHTS TO FOREIGN AND DOMESTIC INVENTORS. 

First of these to be considered is the provision of articles 2 and 3, by 
which the subjects or citizens of one countr}^ shall enjoy in all the other 
countries of the Union all the advantages with respect to protection 
for their inventions which are accorded to subjects or citizens of those 
countries.^ Citizens of the United States under these articles are 
assured the same facilities for taking out patents, and the same pro- 
tection for their patented inventions, in Belgium, Brazil, Denmark, 
France, and the other countries of the Union, that subjects or citizens 
of those countries have under their respective laws. In other words, 
it is provided that there shall be in the countries belonging to the 
Union no discrimination against subjects or citizens of other countries 
of the Union in the matter of patents. 

PRIORITY UNDER THE CONVENTION. 

The second provision of the Convention to be noticed, and one which 
may be of very great advantage to those of our citizens who desire to 
secure patents in foreign countries for their inventions, is that con- 
tained in article 4, and relates to the so called ''delay of priority," or 
"period of priority."^ 

The laws of the more important foreign countries as they stood 
prior to the conclusion of the International Convention and as, for the 
most part, they stand to-day, so far as the subjects or citizens of other 
countries not parties to the International Convention or other special 
conventions or treaties on the subject are concerned, preclude the grant 
of a valid patent for an invention which has, prior to the date of filing 
of the application, been described in a printed publication either official 
or unofficial, which is accessible to the public in the country in which 
the application for patent is made. , The law of France is even more 
stringent in this matter, providing that publication of a description of 
the invention in any country even a day before the filing of the appli- 
cation in France invalidates the patent granted on such application. 
The law of Portugal is equally stringent, and the laws of Austria, 
Denmark, Germany, Hungary, and Japan appear to be the same. 

While in some of these countries it is provided that patents may be 
granted for inventions previously patented in other countries, such 
patents are not only limited to expire with the prior patents in other 
countries, but can be held valid only in case the prior patents granted 
in other countries were either secret patents or were not published 
before the filing of the application or were not published in full or 
otherwise than by title or by abstract insufficient to fully disclose the 
invention. Such publication of the invention as is made in this country 
immediately upon the issue of the patent, both by abstract in the 
Official Gazette and in full in the printed copies of patents, would, if 
prior to the application, certainly if sufficiently prior to have reached 

^Appendix, Chap. VIII, sec. 2, p. 235. 
^Appendix, Chap. II, sec. I, p. 146. 
^Appendix, Chap. II, sec. I, p. 146. 



REPORT OF COMMISSION PATENTS. 13 

the country in which the application is made, invalidate the patent 
granted on that application. 

An}' public use of an invention, in any other country than the United 
States, prior to the filing of an application therein for a patent is ab- 
soluteh^ fatal to the validity of the patent granted on that application. 
In no European country is any exception to this rule permitted, ex- 
cept as provided for b}^ the International Convention or other conven- 
tions having similar provisions. In the United States prior publica- 
tion in a printed publication or prior use of the invention in public, 
provided the publication or use is not more than two years prior to 
the application, is not a bar to the grant of a valid patent for the 
invention, but such a rule is unknown in any European country. But 
in those countries which are parties to the International Convention, 
provided application for patent is filed within seven months of the date 
of application in this country, valid patents may be granted, notwith- 
standing publication of the invention in this country or abroad if 
subsequent to the filing of the application here, and notwithstanding 
its working {exploitation) by a third party in this country or abroad, 
even in the country in which the patent is sought.^ The amendment 
adopted at Brussels (not yet ratified) strikes out the words " by a third 
party." 

While this period of seven months may seem short, it gives an invent- 
or who considers that his invention may be of value in foreign coun- 
tries an opportunity^ to determine whether or not he will find a market 
for his invention in any of these countries before going to the expense 
of applying for patents there. If this "delay of priority" can be 
extended to one year, as has been proposed and is strongh^ urged,^ 
its value to our inventors will be very greatly increased and will be an 
advantage of ver}^ great importance. 

IMPORTATION OF PATENTED ARTICLES. 

Another provision of the Convention of great importance is con- 
tained in article 5, which provides that — 

The introduction by the patentee into countries where the patent has been granted 
of articles manufactured in any other of the States of the Union shall not entail 
forfeiture. 

The patentee, however, shall be subject to the obligation of working his patent 
conformably to the laws of the country into which he has introduced the patented 
article. 

Prior to the adhesion of the United States to the International Conven- 
tion an American inventor who had secured a valid patent in France 
or Tunis was not only required, in order to keep his patent in force, to 
satisfy the requirements of the laws of those countries as to working the 
invention there within two j^ears of the grant of the patent, but was 
not permitted even during that two 3^ears to import into the country 
so much as a single article embod^'ing the patented invention manufac- 
tured in this countr}^, unless by consent of the Government, without 
forfeiting his patent. Under the Convention the American inventor 
who has S3cured a patent in either of these countries may send into 
the country during the two years following the grant of the patent 
articles embodying the invention manufactured in this country or in 

^Appendix, Chap. XI, p. 269. ^Appendix, Chap. Y, p. 192. 



14 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

any other country without forfeiting his patent. This privilege is of 
very great importance, as it gives an opportunity for an inventor to 
ascertain by a practical test whether there is a sufficient market in 
that country for his invention before going to the expense of such 
establishment as may be necessary to manufacture the invention within 
the country. And even after such steps have been taken to manufac- 
ture the invention on a commercial scale within the country or the 
requirements respecting working have been otherwise satisfied, the 
privilege of importing articles embodying the invention is still of 
material importance. 

INDEPENDENCE OF PATENTS. 

Of special importance is the provision contained in the amendment 
to article 4, adopted at the recent conference at Brussels,^ not yet 
ratified. It provides that patents granted in the different countries 
for the same invention shall be independent; that is, shall not be lim- 
ited in terms by the term of any patent previously taken out in 
another country and shall not be made void by the forfeiture of a 
patent in another country. Prior to the act of March 3, 1897, a patent 
granted in the United States on an invention previously patented 
abroad was required to be limited to expire with the foreign patent.^ 
The same provision is found in the laws of many foreign countries, 
and in certain countries the patent granted on an invention which has 
been previously patented in other countries becomes forfeited if in 
any of the other countries the patent ceases to be in force. Under the 
present law of the United States^ patents are granted for the full term 
of seventeen years, whether the invention patented has been previously 
patented abroad or not. This amendment to the Convention is directly 
in line with the change in our law. 

Without this provision of the Convention it might become necessary 
for an inventor, who out of abundant caution had taken out a patent 
on his invention in each of a half dozen or more countries, in one 
or two of which the invention might prove of great value, while in 
the others it might for various reasons prove of little value, to pay 
the heavy annual taxes in every one of these countries and satisfy the 
requirements as to working in order to prevent the forfeiture of his 
patents in the countries in which his invention was of value. The 
dependence of a patent in one country assigned, it may be, to a citizen 
of that country, upon the continued existence of a patent for the same 
invention in another countr}^ and under the control of some other per- 
son, obviously could not but render property in a patent right most 
uncertain. To have done away with this serious difficulty is a long 
step forward. 

KECAPITULATION OF ADVANTAGES SECURED BY THE CONVENTION. 

The advantage to our citizens in the matter of patents directly afforded 
b}^ the convention may be thus recapitulated: 

First. The enjoyment in foreign countries of equal rights with sub- 
jects or citizens of those countries. 

^Appendix, Chap. Ill, sec. 1, p. 182. 
'' Sec. 4887, Rev. Stat. 
»Act of March 3, 1897. 



REPORT OF COMMISSION PATENTS. 15 

Second. The "delay of priority" of seven montiis within which to 
file applications abroad after filing in this country. 

Third. The privilege of introducing articles embodying the invention 
manufactured in this country into foreign countries to a certain extent 
without thereby causing the forfeiture of the patents taken out there. 

To these advantages will be added, when the amendment above 
referred to as adopted at Brussels is ratified, the very important advan- 
tage that patents taken out in different countries will be independent 
of each other. 

It may be true of some of the countries which are members of the 
Union that they do not carry out the terms of the Convention to the full 
extent which our interpretation of its terms requires, as in the case of 
the United States, still we may fairly say that they seem to be generally 
enforced, as shown by the laws of these countries.^ 



PROGRESS IN INTERNATIONAL AGREEMENT AS TO PATENTS SINCE THE 

CONVENTION. 

Since the adoption of the Convention, those interested in patent 
matters in the various countries, both those which are parties to the 
Convention and some of those which are not (for at all of these con- 
ferences representatives of countries not now in the Union have 
been in attendance),^ have been brought more closely in touch and 
have taken more liberal views of the rights of the in/entor and the 
desirability in the interest of the public of affording him adequate 
protection for his invention. 

As an indication of the interest in patents and trademarks from an 
international standpoint which has been aroused it should be noted 
that since the Convention was concluded similar conventions, provid- 
ing for even longer periods of priority, have been concluded between 
certain South American countries (conventions of Montevideo, 1889);^ 
between Germany and Austria-Hungary, 1891;* Germany and Italy, 
1892;^ and Germany and Switzerland, 1892^ 



MODIFICATION OF REQUIREMENTS AS TO WORKING. 

This progress has been most marked in the modification of the 
requirement for working, which is a feature of most European laws. 
This requirement has been regarded as a great hardship by our citi- 
zens who take out patents abroad. The time limit within which the 
invention must be worked, that is, manufacturing carried on to an 
extent sufficient to satisfy the various governments, varied prior to the 
Convention in different countries, from one year in Austria, Denmark, 
and Spain, to two or three years in other countries. In Denmark, 
working was required to be continuous. In Austria and Denmark, 
the term has now been extended to three years, and this is now the 
term in nearly all of the countries which require working. The exten- 
sion of the term is a material advantage in that it permits the inventor 

1 Appendix, Chap. XI., p. 269. * Appendix, Chap. IX, sec. 3, p 256. 

2 Appendix, Chap. V., p. 192. ^ Appendix, Chap. IX, sec. 4, p. 258. 
^Appendix, Chap. IX, sees, land 2, p. 254. ^Appendix, Chap. IX, sec. 4, p. 258. 



16 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

a reasonable time within which to dispose of his rights before incurring 
the expense of working/ 

CHANGES IN PATENT LAWS SINCE THE ADOPTION OF THE CONVENTION. 

It is not too much to say that nearly every foreign country of indus- 
trial importance, unless indeed its earlier laws were comparatively lib- 
eral, has within the last fifteen years wholly rewritten its patent laws 
on broader lines and in the direction of far greater liberality than was 
before considered possible. 

The Austrian law of 1852 did not provide for preliminary examina- 
tion as to novelty, nor for the publishing of patents granted. On 
request, patent specifications were preserved in secrecy. Inventions 
were required to be worked within one year. 

The present law of 1897 provides for preliminary examination, for 
the printing of patents issued, and extends the term within which the 
invention should be worked to three 3^ears. 

Denmark had no patent law prior to the present law of 1894. Pat- 
ents were granted hj the crown, but were for terms of but three to 
ten years; in special cases only, for fifteen years; in no case to for- 
eigners for more than five 3^ears. Patents were forfeited if the inven- 
tions were not worked within one year and worked continuously 
thereafter. 

The present law provides for preliminary examination, recognizes 
the inventor, whether a Danish subject or a foreigner, as the one to 
whom or in whose interest the patent should be granted, provides for 
the grant of patents for fifteen years in all cases, and extends the term 
for working to three years. It also provides for giving full force and 
efiect to the provisions of the International Convention. 

Mexico, prior to 1890, granted patents for but ten years, and limited 
patents for improvements to six years. Patented inventions were 
required to be worked within two years. Under the present law 
patents are granted for twenty years, and do not lapse for non working. 

In Norway there was no patent law prior to 1885, though under a 
royal decree of 1839 patents for a limited term, not to exceed ten 
years, could be granted. Patents were granted to foreigners only on 
condition of their becoming citizens of Norway, and the inventions 
were required to be worked within two years. 

Under the present law patents are granted for fifteen years, there 
is no discrimination against foreign inventors, the law provides for 
preliminary examination as to novelty, and three years is allowed for 
working. 

Russia, prior to the present law of 1896, granted patents for but 
three, five, or ten years, and required the invention to be worked 
within not exceeding one-fourth of the term for which the patent was 
granted. The term for which patents are now granted in Russia is 
fifteen years, and five 3^ears is allowed for working. 

In Sweden, under the law of 1819, foreigners were not permitted to 
obtain patents. The law of 1831 permitted foreigners to take out 
patents on condition of establishing domicile in Sweden within a year 
or assigning the patent to a Swedish subject. The law of 1856 modi- 
fied this condition, foreigners being permitted to. take out patents on 
condition of appointing a representative in the country. 

^Appendix, Chap. V., p. 192. 



REPOKT OF COMMISSION PATENTS. 17 

The present law of 1884:, as modified in 1893, 1897, and 1898, pro- 
vides for giving- full force and effect to the requirements of the Interna- 
tional Convention and is in full accord with the spirit of the Convention. 
Under it there is no discrimination against foreign inventors. The 
system of preliminar}^ examination is provided for, and while working 
is still required, a patent granted for an invention previously patented 
in another countr}^ is not forfeited for failure to work the invention 
in Sweden, provided the requirements as to working in the countr}^ of 
origin are satisfied. 

Switzerland had no general patent law prior to 1888, though prior 
to that 3^ear certain Cantons had made some provision for the protec- 
tion of inventions. The present law is in most respects an excellent 
one, intended to give full force and effect to the requirements of the 
International Convention. It does not, however, permit patents to be 
granted for inventions for chemical or other processes or for chemical 
products. 

DATE OF ADOPTION OF PATENT LAWS AT PRESENT IN FORCE. 

The date of adoption of the patent laws at present in force in the 
principal countries of industrial importance is significant of the atten- 
tion which is being given in recent years to the question of patents 
throughout the world and of the general recognition by the more pro- 
gressive nations of the importance of adopting laws more liberal toward 
the inventor than those formerl}^ in force. 

Austria. — Law of January 11, 1897. This law is in substantial harmony with the 
spirit of the International Convention, though Austria is not a member of the Inter- 
national Union. 

Belgmm.—Law of May 24, 1854, amended March 27, 1857, and July 5, 1884. This 
law is a liberal one, pro\'iding for the grant of patents to foreigners under the same 
conditions as to subjects for a term of twenty years and under fair conditions as to 
working. The requirements of the International Convention are given full force and 
effect. 

Brazil. — Law uf October 14,1882. At the date of the adoption of this law. the Inter- 
national Convention, though not formerly concluded, was under consideration, and 
the law is so drawn as to give effect to its provisions.^ 

Canada. — Law of 1872, amended July 9, 1892, and April 1, 1893. This law is in a 
number of important particulars substantially identical with the United States 
patent law. 

Denmar'k. — Law of April 13, 1894. This law resembles in many respects the Ger- 
man law of 1891, but is drawn with special reference to giving effect to the propul- 
sions of the International Convention, to which Denmark became a party soon after 
the adoption of this law.^ 

Finland. — Law of March 3(i, 1894. While Finland is not a party to the Inter- 
national Convention, the influence of the Convention is plainly apparent from the 
very liberal provisions of this law. 

France.— July 5, 1844, amended May 23, 1856, and May 23, 1868. While this law 
has not been substantially modified, and is in full force in all its requirements, which 
are most stringent, especially as to the question of novelty, the forfeiture of a patent 
for importation of articles embodying the invention manufactured in a foreign coun- 
try and the requirement as to working, so far as subjects or citizens of countries not 
parties to the International Convention are concerned, it does not apply in any mat- 
ter in which it is not in harmony with the requirements of the International Conven- 
tion to those entitled to claim the privileges thereof. 

Germany. — Law of April 7, 1891. This law, with the law of 1877, for which it is a 
substitute, is largely based on the United States patent law, though it contains a 
requirement for working and other requirements not found in the United States law. 

^Appendix, Chap. XI, sec. 1, (a), p. 269. ^Appendix, Chap. XI, sec. 3, (a), p. 270. 



18 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Germany, though not a party to the International Convention, is a party to similar 
conventions with certain European countries, the provisions of which are even more 
liberal as regards the delay of priority than the International Convention, and full 
force and effect are given to these conventions. ^ 

Great Britain. — Statute of monopolies of 1623, law of August 25, 1883, amended 
June 25, 1886, and December 24, 1888. Under this law the provisions of the Inter- 
national Convention, so far as they relate to patents, are given full force and effect.^ 

Hungary. — Law of July 14, 1895. This law is in substantial harmony with the 
spirit of the International Convention. 

Italy. — Law of October 30, 1859, amended January 31, 1864, and January 16, 1898. 
This law, like that of Belgium, though not of recent date, is liberal in its provisions. 
The amendment of 1898 provides expressly for carrying into effect the provisions of 
the International Convention as regards priority, though prior to that law the provi- 
sions of the Convention had been given full force and effect.^ 

Japan. — Law of March 1, 1899. This law is drawn with especial regard to the 
provisions of the International Convention, to which Japan has since its adoption 
became a party, and was evidently prepared after a thorough study of the patent laws 
of the United States and the principal European countries.^ 

Luxemburg. — Law of June 10, 1880. 

Mexico. — Law of June 7, 1890, amended June 22, 1896. This law is in most respects 
a liberal one, embodying many of the provisions found in the International Conven- 
tion, the influence of w^hich is apparent. The amendment of 1896 does away with 
the requirement of w^orking.^ 

Norway. — Law of June 16, 1885. This law in many respects follows the Ger- 
man patent law. It provides for giving full force and effect to the provisions of 
the International Convention, to which Norway became a party shortly after the 
passage of the law.*^ 

Portugal.— 'Law of December 15, 1894, amended and finally adopted May 21, 1896. 
This law is evidently drawm with especial regard to both the letter and the spirit of 
the International Convention, to the provisions of which it gives full force and effect.'^ 

Russia. — Law of May 20- June 1, 1896. This law is much more liberal than earlier 
laws. 

Spain. — Law^ of July 30, 1878. The provisions of the International Convention are 
given full force and effect in Spain. 

Sweden.— Law of Mav 16, 1884, amended June 12, 1891, April 14, 1893, March 26, 
1897, May 28, 1897, and May 27, 1898. This law, though largely based on the German 
patent law, was drawn with special regard to the provisions of the International Con- 
vention, to which Sweden became a party in 1885. The later amendments to the law 
are in the direction of greater liberality toward inventors, particularly foreign invent- 
ors, than is required even by the International Convention.^ 

Siuitzerland. — Law of June 29, 1888, amended March 13, 1893. Though Switzerland 
was one of the original parties to the International Convention, no patent law was 
adopted until 1888. The law^ is a liberal one in most respects, though it provides for 
the grant of patents only for inventions which can be represented by models, thereby 
excluding from protection inventions relating to chemical processes. It is drawn 
with special reference to the provisions of the International Convention and gives full 
force and effect to those provisions.^ 

Of these twenty countries all but five have either wholly rewritten 
or materially modified their patent laws since the conclusion of the 
International Convention, and in those countries which are parties to the 
International Convention and have not modified their patent laws since 
its conclusion, the Convention is recognized as having the effect of law. 

It is, however, to be noted that of the countries which are parties 
to the International Convention, two in Europe, the Netherlands and 
Serbia, have at the present time no patent laws, and the Dominican 
Republic also has none. 

^Appendix, Chap. IX, sec. 3, sec. 4, p. ^Appendix, Chap. XI, sec. 13 (a), p. 280. 

256. ^Appendix, Chap. XI, sec. 14 (a), p. 281. 

^Appendix, Chap. XI, sec. 5, p. 273. 'Appendix, Chap. XI, sec. 15, p. 281. 

^Appendix, Chap. XI, sec." 7, p. 275. ^Appendix, Chap. XI, sec. 19 (a), p. 285. 

^Appendix, Chap. XI, sec. 8, p. 275. ^Appendix, Chap. XI, sec. 20, p. 286. 



KEPOET OF COMMISSION PATENTS. 19 



EXAMINATION OF CONVENTION IN DETAIL. 

The Attorney-General of the United States in 1889 expressed the 
opinion (17 Official Gazette, 398, Opinions of Attorney-General, 
vol. 19, 273)^ that the International Convention, in so far as the agree- 
ments therein contained are not in accordance with the present laws of 
the United States, is without force and effect; that it is not self- execut- 
ing, but requires legislation to render it effective for the modification 
of existing laws; and while this opinion has no other effect than the 
creation of a rule of departmental practice and is not binding upon 
the courts, it is our opinion that such legislation should be adopted as 
shall definitely and positively provide for carrying into effect the 
requirements of the Convention. 

Examining the Convention in detail, in connection with the statutes 
of the United States relating to patents for the purpose of determining 
what legislation is necessary to carry its requirements into effect in 
good faith, we find: 

ARTICLE I OF CONVENTION. 

Article I of the Convention contains an enumeration of the States 
which ' ' have constituted themselves into a state of Union for the pro- 
tection of industrial property," and is to be read in connection with 
the first section of t\iQ final protocol' to the Convention, viz: 

(1) The words industrial property are to be understood in their widest acceptation, 
in the sense that they apply not only to the productions of industry properly so called, 
but equally to the productions of agriculture (wines, grains, fruits, cattle, etc.) and 
to mineral productions used in commerce (mineral waters, etc.). 

ARTICLE II OF CONVENTION. 

The subjects or citizens of each of the contracting States shall enjoy, in all the other 
States of the Union, so far as concerns patents for inventions, trade or commercial 
marks, and the commercial name, the advantages that the respective laws thereof at 
present accord, or shall afterwards accord to subjects or citizens. In consequence 
they shall have the same protection as these latter, and the same legal recourse against 
all infringements of their rights, under reserve of complying with the formalities and 
conditions imposed upon subjects or citizens by the domestic legislation of each State. 

This article is to be read with sections 2 and 3 of the final protocol, 
which are as follows: 

(2) Under the name patents of invention are included the various classes of indus- 
trial patents granted by the laws of the contracting States, such as patents of impor- 
tation, patents of improvement, etc. 

(3) It is understood that the final provision of article 2 of the convention shall in 
no respect infringe upon the laws of each of the contracting States, so far as concerns 
the procedure before the courts and the competence of the said courts. 

1. Article II clearly has no bearing on the organization of the 
offices in which applications for patents are filed; and therefore the 
provisions of the United States laws in regard to the organization of 
the United States Patent Office need not here be considered. 

2. Sections 4883 to 4891, inclusive, 4893 to 4895, inclusive, and 4897 
of the Revised Statutes, which provide for the manner of the grant of 
a patent, to whom a patent can be granted, and for what subject-matter, 
and set forth the prerequisites to the grant, make no distinction between 
citizens of the United States and subjects or citizens of foreign coun- 

^ Appendix, Chap. X, p. 265. 



20 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

tries, giving to foreign inventors, so far as the requirements contained 
therein are concerned, all the privileges which are given to our own 
citizens. These sections, therefore, need no amendment in view of 
Article II of the convention. 

3. Section 4892, while permitting an applicant to make oath to his 
application before any person within the United States authorized by- 
law to administer oaths, requires an applicant residing in a foreign 
countr}^ to make such oath before a United States officer or notary 
public. While, strictly speaking, this section does not in terms dis- 
criminate between citizens of the United States and subjects or citizens 
of foreign countries, in its practical working a seemingly necessary and 
unintended hardship does result to foreign inventors from the fact that 
in a number of foreign countries the notaries public are not authorized 
to administer the oath to the applicant. As a result, applicants are in 
some cases put to the expense of considerable journeys to appear before 
a United States officer. It is also a matter of doubt whether in some 
of these countries the oath taken by a subject or citizen before a United 
States officer has by the laws of these countries any validity. To pro- 
vide that the oath may be taken in foreign countries before any judge 
or magistrate authorized b}^ law to administer an oath and having an 
official seal could not in any way prejudice the rights of any American 
citizen and would relieve foreigners of a requirement which has some- 
times proved onerous. 

Such a change would be in the spirit of the Convention, and we recom- 
mend that it be made. 

FOREIGN EXECUTORS AND ADMINISTRATORS. 

4. Section 4896, which provides for an application for patent by the 
executor or administrator of a deceased inventor, does not in terms 
discriminate against subjects or citizens of foreign countries. This 
section is as follows: 

Sec. 4896. When any person, having made any new invention or discovery for 
which a patent might have been granted, dies before a patent is granted, the right 
of applying for and obtaining the patent shall devolve on his executor or adminis- 
trator, in trust for the heirs at law of the deceased, in case he shall have died intes- 
tate; or if he shall have left a will, disposing of the same, then in trust for his devi- 
sees, in as full maimer and on the same terms and conditions as the same might have 
been claimed or enjoyed by him in his lifetime; and when the application is made 
by such legal representatives, the oath or affirmation required to be made shall be 
so varied in form that it can be made by them. 

The Patent Office has, however, by the decision of the Commissioner 
in ex jxcrte Ransom, C. D., 1870, refused to recognize under this section 
of the statutes an executor or administrator unless authorized to act by 
a probate court located in the United States. As a result of this rul- 
ing it has been necessary in case of the death of a foreign inventor 
for an administrator to be appointed under ancillary letters from some 
probate court in this countr3^ The expense of this proceeding is 
necessarily considerable. In practically all of these cases, the only 
estate in this country to be administered upon consists of the right of 
applying for a patent. Until the act of March 3, 1897, went into 
effect, the time within which an application for a patent on an inven- 
tion made b}^ a foreigner for which an application had been previously 
filed in a foreign country could be filed was not limited unless the 
invention had been in public use or on sale in the United States, in 
which case it was necessarily filed within two years from the beginning 



EEPOET OF COMMISSION PATENTS. 21 

of such use or sale. There was therefore ample time within which to 
take out ancillar}^ letters in this country and to make application in 
the name of the administrator authorized to act under such letters. 
As the law now stands an application for patent for an invention for 
which a foreign patent has been granted must be filed within seven 
months from the date of the application on which such foreign patent 
was granted. Circumstances may, and in fact do, arise which render it 
impossible for the ancillary letters to be issued prior to the expiration 
of this term of seven months, with the result that the right to a patent 
in this country is lost. 

It is not believed that it was intended by Congress to prevent by such 
a requirement the grant of a patent to the executors or administrators 
of a deceased inventor, even though he were a subject or citizen of a 
foreign country. Such a discrimination, whether or not it arises from 
the direct requirements of the law, is not in harmony with the spirit 
of the Convention. 

We therefore recommend that this section be amended so as to 
expressly authorize the filing of an application by an executor or 
an administrator authorized by the law of the domicile of the inventor 
to administer upon his estate, whether such inventor was domiciled in 
the United States or in a foreign country. 

5. Section 4898, which provides for an assignment of a patent; sec- 
tion 4899, for the protection of purchasers from the inventor before 
application; and sections 4900 and 4901, for the marking of patented 
articles and a penalty for wrongly marking, require no revision, since 
no distinction is made in them between citizens of the United States 
and foreigners. 

CAVEATS. 

6. Section 4902 provides for the filing of caveats by citizens of the 
United States only. The caveat is not an application for a patent, but 
at most merel}^ a statement to the Government by a citizen, that he has 
made an invention or discovery which is not at the time matured, under 
which statement he is entitled to notice of an application for patent by 
another for the same invention, in order that he may contest the right 
of the latter. 

This section says: 

Sec. 4902. Any citizen of the United States who makes any new invention or dis- 
covery, and desires further time to mature the same, may, on payment of the fees 
required by law, file in the Patent Office a caveat setting forth the design thereof, 
and of its distinguishing characteristics, and praying protection of his right until he 
shall have matured his invention. Such caveat shall be filed in the confidential 
archives of the office and preserved in secrecy, and shall be operative for the term 
of one year from the filing thereof; and if application is made within the year by 
any other person for a patent with which such caveat would in any manner inter- 
fere, the Commissioner shall deposit the description, specification, drawings, and 
model of such application in like manner, in the confidential archives of the office, 
and give notice thereof, by mail, to the person by whom the caveat was filed. If 
such person desires to avail himself of his caveat, he shall file his description, speci- 
fications, drawings, and models within three months from the time of placing the 
notice in the post-office in Washington, with the usual time required for transmit- 
ting it to the caveator added thereto; which time shall be indorsed on the notice. 
An alien shall have the privilege herein granted, if he has resided in the United 
States one year next preceding the filing of his caveat, and has made oath of his 
intention to become a citizen. 

It may perhaps be contended, for the reason above given, that this sec- 
tion is not at variance with Article II of the Convention; but we deem 
it for the best interest of the country that the broadest and most lib- 



22 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

eral construction should be put upon the Convention, and that the right 
of the subjects or citizens of each of the contracting States to "en]oy 
in all the other States of the Union, so far as concerns patents-for 
inventions, * * * the advantages that the respective laws thereof 
accord ^' * * to subjects or citizens," should be construed to mean 
the right to enjoy all that which precedes as well as that which suc- 
ceeds the grant of the patent, notwithstanding the concluding sentence 
of the article, which is as follows: 

In consequence they shall have the same protection as these latter, and the same 
legal recourse against all infringements of their rights, under reserve of complying 
with the formalities and conditions imposed upon subjects or citizens by the domes- 
tic legislation of each State. 

If it be not so construed in foreign countries, the citizens of the 
United State j might possibly be cut off from the right to take the nec- 
essary steps preliminary to applying for a patent, and, consequently, 
never obtain a patent, and still the obligations of the Convention be 
regarded as fulfilled, since the laws of other countries might still give 
the same protection to our citizens in regard to patents as to their own 
citizens; but the law would be, nevertheless, construed in such away 
as to prevent our citizens from obtaining patents. 

With this understanding of the meaning of the Convention, it is clear 
that the United States is in good faith bound to so amend the law that 
foreigners entitled to the privileges of the Convention shall, in respect 
to the filing of caveats, be placed on the same footing with our own 
citizens. This may be done in either of two Avays, one of which is to 
remove from the statute the words by which it is restricted in its appli- 
cation, to citizens of the United States. If such amendment should be 
made, it should be provided that foreigners filing caveats appoint an 
agent in the United States, on whom notices may be served, so that 
unnecessar}^ delays may be avoided. 

The second way in which the requirements of the Convention may 
be satisfied, and this is, in our opinion, the better wa}^, is to repeal the 
statute providing for the filing of the caveats. 

The very general opinion of those most familiar with patent practice, 
as expressed to us, is that the caveat is practically of no use to invent- 
ors. Many attorne}- s of long experience in patent matters have assured 
us that they always advise their clients not to file caveats. The prep- 
aration of a caveat, if it be prepared with care and skill, involves con- 
siderable expense, hardly less than the preparation of an application. 
The filing of a caveat necessarily implies the subsequent filing of an 
application, with the result that the inventor is put to practically a 
double expense without practical advantage. 

If foreigners are permitted to file caveats, as it would seem must be 
done if our citizens are permitted to do so, the result will be the intro- 
duction of a class of evidence which has always been considered open 
to very serious objection, and has never been permitted to be intro- 
duced in any proceeding before the Patent Office, or before the courts 
in patent matters — namely, evidence of acts performed in a foreign 
country. If foreigners are permitted to establish conception of an 
invention in a foreign country by filing a caveat — and a caveat has 
practically no other effect than that of establishing conception of the 
invention described therein on the date on which it is filed — it would 
seem to be necessary to permit evidence to be introduced of the reduc- 
tion of the invention to practice, as by construction of a machine, in 
the foreign country. 



REPORT OF COMMISSION PATENTS. 23 

We are clearly of the opinion that the statute providing for the 
filing of caveats should be repealed. 

7. Section 4903 is merely a matter of official requirement of notice 
of rejection, and, being general in its character, that is, applicable to 
citizens or subjects of all nations, requires no revision. 

8. Sections 4904 and 4908 provide for determining which one of 
several applicants for a patent for the same invention is entitled to a 
patent. No distinction is made in the statute between citizens of the 
United States and foreigners and, therefore, these sections do not 
require amendment, unless it be to change a rule of evidence as to the 
effect of foreign applications. This will be considered when Article IV 
of the Convention is reached. 

9. Sections 4909 to 4914, inclusive, provide for various appeals from 
primary examiners to the examiners-in-chief, to the Commissioner of 
Patents, and to the supreme court of the District of Columbia, but the 
proceedings are equally open to citizens and foreigners in all respects, 
and these sections do not require revision. 

10. Section 4915, providing for a suit in equity to obtain the grant 
of a patent; section 4916, for a reissue of a defective patent; section 
4917, for a disclaimer; and section 4918, for a suit to determine the 
question of rightfulness of grant between two conflicting patent grants 
are open to citizens and foreigners alike and, therefore, do not need 
amendment. 

11. Sections 4919 to 4923, inclusive, refer to procedure in the courts 
for the suppression of infringements and the recovery of damages for 
past infringements. The remedies provided for under these sections 
are open to all patentees or owners of patents whether citizens of the 
United States or foreigners. No discrimination is made against for- 
eigners in these sections and for the purpose here considered they need 
no amendment. 

12. Sections 4924 to 4928, inclusive, providing for extension of 
patents granted prior to March 2, 1861, are now obsolete. 

13. Sections 4929 to 4933, inclusive, providing for the grant of 
patents for designs are not restricted in their scope to any nationality. 

14. Sections 4934 to 4936, inclusive, which state the fees required 
in connection with patents, apply equally to citizens and foreigners 
and need no amendment. 

ARTICLE III OF CONVENTION. 

Article III of the Convention "assimilates" subjects or citizens of 
States not forming part of the Union for the Protection of Industrial 
Property in certain cases to the subjects or citizens of the contracting 
States, and as both such classes of persons are treated alike under 
our laws, need not be further considered except in connection with 
Article IV below. 

ARTICLE rV OF CONVENTION. 

Article IV of the Convention reads as follows : 

^ Any one who shall have regularly deposited an application for a patent of inven- 
tion, of an industrial model, or design, of a trade or commercial mark, in one of the 
contracting States, shall enjoy for the purpose of making the deposit in the other 
States, and under reserve of the rights of third parties, a right of priority during 
the periods hereinafter determined. 

S. Doc. 20 3* 



24 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

In consequence, the deposit subsequently made in one of the other States of the 
Union before the expiration of these periods can not be invaUdated by acts per- 
formed in the interval, especially by another deposit, by the publication of the 
invention or its working by a third party, by the sale of copies of the design or model, 
by the employment of the mark. 

The periods of priority above mentioned shall be six months for patents of inven- 
tion and three months for designs or industrial models, as well as for trade or com- 
mercial marks. They shall be augmented by one month for countries beyond the 
seas. 

It is unnecessary to go over the separate sections of the statute again 
in connection with this article. 

Article IV is in substance an agreement that after the filing of an 
application for a patent in one of the countries of the Union created 
by the Convention, the applicant shall have a reasonable time within 
which to make application in the other countries of the Union with- 
out the risk of preventing the grant of valid patents to him in these 
other countries by premature publication of his invention, or other 
acts by which knowledge of the invention might be disclosed in such 
other countries in advance of the actual filing of his application there. 
Such matters happening either before or after the period of priority 
are unaffected by the Convention. This period of time is made in 
certain cases six months and in others seven months. It is similar in 
many respects to the two years' period allowed to the inventor by sec- 
tion 4886 of the Revised Statutes, since the patent afterwards granted 
to him in the United States can not be invalidated '' by publication of 
the invention or its working by a third party," or even by the inventor 
himself during said period if the amendment striking out "third 
party," adopted at the Brussels conference, is ratified. 

What the effect of the application will be, and whether or not it must 
disclose, as filed, a patentable invention in sufficiently full and clear 
terms to warrant the grant of a patent, is not specified in the Conven- 
tion. It is only agreed that acts done hj a third party in the specified 
period subsequent to its filing shall be without effect upon applications 
for patent filed in other countries before the expiration of that period. 

There is nothing in the letter or the spirit of the Convention to 
require the United States to give to the application in any respect 
except its date any standing to which it would not be entitled if filed 
by a citizen of the United States. Necessarily, in order to be given 
the advantage of the date of the foreign application, the application 
filed here must correspond in all substantial particulars with the for- 
eign application; that is, it must be for the invention disclosed in the 
foreign application. Nothing in the nature of new matter or unwar- 
rantable expansion of the disclosure of the invention in the original 
application can be permitted. 

If the prior foreign application fails to disclose the invention dis- 
closed in the application filed here, it can not serve as a basis for the 
claims of priorit}^ under the Convention. 

The sufficiency of the disclosure and the novelty and patentability 
of the invention as found in the foreign application must be decided 
in accordance with existing laws, precisely as in a case of a like appli- 
cation filed by a citizen of the United States. We are, therefore, of 
the opinion that an amendment to the law should be made, providing 
that the foreign application shall have, in case an application is filed 
in this country by the applicant abroad within the specified period, the 
same effect as if filed here on the day it was filed abroad. 



EEPORT OF COMMISSION PATENTS. 25 

Section 4887 of the Revised Statutes, as amended by the act of March 
3, 1897, is not in harmony with Article IV of the Convention. The 
section is as follows: 

Sec. 4887. No person otherwise entitled thereto shall be debarred from receiving a 
patent for his invention or discovery, nor shall any patent be declared invalid by 
reason of its having been first patented or caused to be patented by the inventor or 
his legal representatives or assigns in a foreign country, unless the application for said 
foreign patent was filed more than seven months prior to the filing of the application 
in this country, in which case no patent shall be granted in this country. 

The effect of this section, as amended, is to subject the inventor who 
has merely made application for and received a patent in a foreign 
country to more severe conditions than are enforced against the 
inventor who, without applying for a patent, has disclosed his invention 
to the public in a printed publication. The inventor who has applied 
for and received a patent abroad must, under this section, be refused 
a patent in this country if he does not apply here within seven months 
from the date of his application abroad. The inventor who has dis- 
closed his invention to the public in a printed publication is not refused 
a patent here if he filed his application at any time within two years. 
The foreign inventor who puts his invention in public use abroad, pro- 
vided it has not been on sale or in public use in the United States for 
more than two years and has not been disclosed in a printed publica- 
tion for more than two years, may apply at any time for a patent in 
this country and may receive a valid patent. 

It is generally recognized that the only ground for refusal of a 
patent for an invention, which, at the date of its invention was new 
and patentable, is that before application is made the invention had 
been so disclosed to the public that it had by presumption of law 
ceased to be the exclusive property of the inventor, and as the filing 
of an application for patent in this or any other country is not in itself 
a disclosure of the invention, applications being generally kept secret 
in this country until actual issuance of the patent, and in other coun- 
tries during at least a portion of the period intervening between the 
filing of the application and the grant of the patent, it seems clear 
that no presumption of dedication to the public or abandonment of 
his rights by the inventor can arise from the mere filing of an 
application. 

It, therefore, appears that this section discriminates without good 
reason against the inventor who has merely filed his application 
abroad. So far from being in accordance with the Convention, this sec- 
tion is not only contrary to its spirit, but introduces into the United 
States law, which has heretofore been justly considered the most liberal 
patent law in the world, a ground for rejection not recognized by any 
European country, even by those whose laws are most stringent as to 
the requirement of absolute novelty. 

If foreign countries were to adopt such a provision as is contained 
in this section, making it obligatory upon American inventors to apply 
for patents abroad within seven months from the date of filing of their 
applications here, our inventors would be deprived of the benefit of 
the preliminary examination here and would be compelled to file their 
applications abroad in an incomplete and unsatisfactory form. The 
result would be that inventors would often be subjected unnecessarily 
to great expense, or would fail to secure valid patents abroad. This 
is precisely the effect which this section has upon foreign inventors, 



26 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

particularly those who first file their applications in a country in which 
applications are subjected to preliminary examination. 

For instance, an application is filed in German3^ It is seldom that 
the examination is completed there for eight months. The German 
inventor must, therefore, either file his application here before the 
novelty of his invention has been ascertained through the examination 
made by the German patent office, or must depend upon getting his 
application patented in this country within a few weeks of its filing in 
this country — practically an impossibility. 

We may also call attention to the fact that under the laws of most 
foreign countries the first to appl}^ for a patent is the one to whom it is 
granted. The Convention has created an exception to the rule and 
made an application in any State of the Union for the Protection of 
Industrial Property of the same effect as an application in the country 
where an application is subsequently made within the time specified as 
a period of priority. For example, one who first applied for a pat- 
ent for an invention in Great Britain would be entitled to it unless 
someone had applied for a patent for the same invention in the United 
States prior thereto, and in that case, if the citizen of the United 
States should apply for a patent under the Convention, claiming the 
date of his United States application, he, and not the British subject, 
would receive the patent. This has actually happened in practice. 

It has been suggested that section 4887 may be made the basis of 
reciprocity with countries which do not grant patents for product 
inventions. 

It has also been suggested that the section be repealed. 

We recommend that section 4887, as amended March 3, 1897, be so 
amended that the application for patent in a foreign country shall not 
be a bar to the grant of a patent to the same applicant in this country. 

ARTICLE V OF THE CONVENTION. 

Article V of the Convention provides that patents shall not be for- 
feited by reason of importation of the articles covered by the patent. 
Forfeiture for this cause has never been a requirement of the United 
States laws, and no change in the law is needed to carry this provision 
of the Convention into effect. 

OTHER ARTICLES OF THE CONVENTION. 

Articles VI, VII, VIII, IX, and X of the Convention relate to trade- 
marks and commercial names and will be considered later with reference 
to the trademark law. 

Article XI requires that temporary protection be accorded to inven- 
tions which may be exhibited at international exhibitions. The pur- 
pose of this requirement is to permit exhibitors to patent their 
inventions, notwithstanding an exhibition of them which would in cer- 
tain countries amount to such a disclosure as would bar the grant of a 
valid patent. As by the United States law public use of an invention, 
if not more than two years prior to the filing of the application 
therefor, is not a bar to the grant of a valid patent it is clear that the 
exhibition of an invention during the few months during which inter- 
national expositions usually last would not prevent the grant of a patent 
on an application filed within a reasonable time. The present law gives 
full effect to this article and no change in the law is required by it. 



REPORT OF COMMISSION PATENTS. 27 

Article XII of the Convention relates to establishing a special service 
for industrial property and a central depot for giving information to 
the public, etc. The Patent Office, as it has existed in the United 
States since long prior to the Convention, in all respects satisfies the 
requirements of this article and no further legislation on this matter is 
needed. 

Article XIII of the Convention relates to the establishment of the 
international bureau and the provision for its support. The obliga- 
tion resting on the United States in this matter has been met by includ- 
ing in the annual appropriation acts a provision for the payment of 
the necessary amount. 

The remaining articles of the Convention relate to revision of the 
Convention, the adherence of new States, and other matters which do 
not affect the present inquiry. 

THE TREATY WITH JAPAN. 

The treaty with Japan, ^ so far as it relates to patents, does not make 
necessary any change in existing law, except in the matter of caveats. 
Under the treaty subjects of Japan are entitled equally with our own 
citizens to file caveats, and section 4902 of the Revised Statutes should 
be amended to permit them to do so if that section of the statutes is 
to remain in force. 

CHANGES REQUIRED IN THE LAWS OF THE UNITED STATES TO GIVE 
FULL EFFECT TO THE CONVENTION. 

From this consideration of the Convention and treaties to which the 
United States is a party and of the present Ir^ws of the United States 
relating, to patents it appears that the following changes are necessary 
in order to give full force and effect to the agreements which have 
been entered into: 

First. The application for a patent filed within seven ^ months of the 
filing of an application for a patent for the same invention in any for- 
eign country which is a party to the International Convention should 
be given the same force as regards the question of priority that it 
would have if filed on the date on which the foreign application was filed. 

Second. Subjects or citizens of countries which are parties to the 
International Convention and subjects of Japan should be permitted to 
file caveats if the law providing for the filing of caveats is to remain 
in force. 

These changes are required by the letter and spirit of the Inter- 
national Convention and the treaty with Japan. 

Third. Executors or administrators authorized under the law of the 
domicile of the deceased inventor to administer upon his estate should 
be permitted to make application and receive the patent for such 
invention. 

Fourth. Applicants located in foreign countries should be permitted 
to make the affidavit required by law before any judge or magistrate 
authorized to administer oaths of the country in which they may be. 

These changes are, in our opinion, in accord with the spirit of the 
Convention, and should be made in order to relieve foreign applicants 
from requirements which impose hardships upon them and are not 
absolutely necessary. 

' Appendix, Chap. XVIII, sec. 9, p. 332. 
^ Extended to twelve months. 



28 REVISION OF STATUTES RELATING TO PATENTS, ETC. 
THE PATENT LAWS OF FOREIGN COUNTRIES. 

We have carefully considered the patent laws of foreign nations 
and compared their essential features with those of the United States 
law with a view to determining what provisions of those laws, if any, 
are suggestive of advantageous changes in our law. 

We find that no less than seventy-one of the countries of the world, 
including, with but one or two exceptions, every country which is 
considered as a part of the civilized world, have recognized the impor- 
tance of encouraging the development of the liberal arts by adopting 
laws under which an inventor may, as a matter of right, secure pro- 
tection for a limited term for any new and useful invention capable of 
industrial use.^ Among the countries which have patent laws are 
included practically all English-speaking countries. Hardly a colony 
of Great Britain, whatever its size or importance — Hongkong as well 
as Canada, St. Helena as well as New South Wales and Victoria — but 
has its patent law. Besides the countries which have general laws 
providing for the grant of patents, a number of other countries pro- 
tect inventions by special legislative or crown grants. Such protec- 
tion is, however, hardly to be classed with the protection afforded 
by patents granted under a general law.^ It is obviously both costty 
to the inventor and liable to serious abuse. It is to be classed with 
monopolies such as existed in England early in the seventeenth cen- 
tury and were found to be open to such serious objections that they 
were done away with by the Statute of Monopolies of 1623. 

No country which has ever had a patent law, with the single exceptiori 
of the Netherlands, is without a patent law to-day. Few subjects have 
received from legislators throughout the civilized world more careful 
attention in recent years than that of patent protection. As might 
naturally be expected, the patent laws of the different countries differ 
in many particulars from each other and from the United States law, 
though the differences are in many respects less wide than they were 
a comparatively few years ago. 

DIFFERENCES BETWEEN PATENT LAWS OF FOREIGN COUNTRIES AND 
THAT OF THE UNITED STATES. 

It is hardly of importance to our present inquiry to present in detail 
the features of the patent legislation of the different countries. It will 
be sufficient to here consider those features in which foreign laws 
differ from the United States law which may appear to be, or which 
have been urged upon us as being, features in which the United States 
laws could be amended with benefit to the public. 

PRELIMINARY EXAMINATION OF APPLICATIONS FOR PATENT. 

Perhaps the most important particular in which the United 
States patent law differs from the -majority of foreign patent laws 
is in the preliminary examination. In many of the foreign coun- 
tries patents are granted on application without examination into 
the novelty of the invention, patents being granted for inventions 
which are obviously old and in common use as readily as for inventions 

1 Appendix, Chap. XIII, p. 292. 



REPOET OF COMMISSION — PATENTS. 29 

which are new. Necessarily the patents granted for inventions which 
are not new are invalid and worthless. While this system of granting 
patents has its earnest advocates (and it is to be said that under this 
S3^stem there is no opportunity for the refusal of a patent for a meri- 
torious invention, and it is undoubtedly true that in some cases patents 
have been refused for meritorious and important inventions under the 
preliminary examination system, and it should also be said that under 
this system patents are granted without the delay necessar}^ under 
the preliminary^ examination S37^stem), we are of opinion that the present 
laws of the United States, in so far as they provide for the examination 
of all applications for patent and for the grant of a patent only in 
case the invention is new and useful, need no change. This opinion 
is strengthened by the fact that the preliminary examination system 
on the same general plan as provided for in the United States law has 
so far commended itself to foreign legislators that it has been adopted 
in man}^ important countries, notably Austria, Canada, Denmark, 
Germany, Japan, Norway, Russia, and Sweden. 

In this connection should be mentioned a system which, though not 
in practical operation in Europe, is advocated by many jurists, viz, 
the combination of the registration and preliminary examination 
systems by issuing patents to all applicants, affixing to the patents the 
results of a preliminary examination such as now made in this country. 
It is claimed that the advantages of both systems of granting patents 
would thus be obtained. The inventor would not be prevented from 
obtaining protection for his actual invention in the terms in which he 
chooses to present it, and the public would be warned as to the extent 
of that invention by the disclosure of the state of the art. 

THE QUESTION OF NOVELTY. 

In regard to what constitutes patentable novelty, foreign patent 
laws generally differ widely from the United States law. Under the 
United States law an invention which has been disclosed to the public, 
and has evQn been in public use or on sale, may be patented, provided 
it is applied for within two years from the date on which it was first 
disclosed to the public in a printed publication or first put in public 
use or offered for sale. Under foreign laws generally any disclosure 
of the invention to the public of the country prior to the date of appli- 
cation for patent, whether by disclosure in a printed publication or by 
use in public, is sufficient to prevent the grant in the countries in which 
the system of preliminary examination prevails, and in countries in 
which patents are granted on application without such examination is 
fatal to the validity of the patent. The law of France is so strict in 
this regard that the publication in print of a description of an inven- 
tion in this country the day before the application is filed in France is 
sufficient to invalidate the patent granted on such application. 

We see no reason for changing the existing law of the United States 
in this regard. 

DISTINCTION BETWEEN A PATENT AND A PRINTED PUBLICATION. 

In this connection it is to be noted that under the United States law ^ 
the patenting of an invention is made the equivalent of the publication 

iSec. 4886, Rev. Stat. 



30 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

of the invention in print as a bar to the grant of a patent. In this 
country patenting is the equivalent of publication in print, for the 
reason that printed copies of patents are accessible to the public on 
the day of their issue. Such is not the case in many of the foreign 
countries. In fact, in few countries are patents published on the day 
of their issue. In some countries, as, for instance, Ecuador and 
Bolivia, the specifications of patents are preserved in secret until 
their expiration. In Austria up to the date at which the law of 1897 
went into effect, the specifications of patents could on request be kept 
secret. In France the specifications of patents are by law required to 
be published in print only after they have been in force a year, and 
in fact have not been published since 1893. In other countries, as, 
for instance, Belgium, abstracts only are published. 

The fact that patenting and publication in print are not the same 
thing is clearly recognized in most foreign countries. The law of 
France makes publication of an invention in print prior to the date of 
application an absolute bar to the grant of a patent, but expressly pro- 
vides that an invention already patented abroad may be patented in 
France, the effect of such foreign patent being to limit the term of the 
French patent, but not to bar the grant of a valid patent. It is to be 
understood that such foreign patent if published in print becomes at 
once a publication, and as such is an absolute bar to the grant of a 
valid patent thereafter in France. 

With the exception of Belgium, Canada, Italy, and Eussia, none of 
the more important countries makes the previous patenting of an inven- 
tion in another country, as distinguished from its publication in print, 
a bar to the grant of a patent, and in these countries the foreign patent 
is not a bar to the grant of a patent to the inventor who secured such 
foreign patent. 

In Great Britain, Germany, Austria, Denmark, Hungary, Japan, 
Norway, Portugal, Sweden, and Switzerland, a valid patent may be 
obtained irrespective of patents previously obtained for the same 
invention in other countries, provided such patents have not, at the 
date of filing of the application, been published in print. 

The United States law^ makes knowledge or use of an invention by 
others in this country prior to its invention by the applicant for patent, 
or public use or sale in this country for more than two years prior to 
the publication, a bar to the grant of a patent, but there is nothing in 
the law to make prior knowledge or use of the invention in a foreign 
country or public use or sale in a foreign country a bar, though publi- 
cation in print in any foreign country for more than two years prior 
to the application is by the same section of the statute made a bar to 
the grant of a patent. If prior knowledge or use or public use or 
sale in a foreign country is not under the law a bar to the grant of a 
patent, it seems clear that the mere issuance of a patent in a foreign 
country, so long as that patent is not published in print, should not 
be a bar. 

This view is in accord with the opinion of the representatives of 
the countries which are parties to the International Convention, as 
appears from the adoption of the amendment to article 4, before 
referred to, which provides that patents granted in the different coun- 
tries of the International Union shall be independent of patents 
obtained in other countries. 

^Sec. 4886, Rev. Stat., as amended March 3, 1897. 



REPORT OF COMMISSION PATENTS. 81 

PROVISION BY NONRESIDENT APPLICANTS FOR SERVICE ON THEM IN 

THE UNITED STATES. 

In none of the foreign countries which have patent laws, with but 
a single exception (Guatemala), is it made essential that an inventor in 
order to be entitled to a patent shall be a subject or citizen of the 
country or a resident thereof. But under the patent laws of nearly 
all foreign countries applicants for patent are required to state their 
domicile, if within the country, and if not, to elect domicile at some 
place within the country or to appoint some person domiciled within the 
country to represent them in any proceedings relative to the patent. ^ 

The purpose of this requirement is to give the courts of the country 
jurisdiction in any proceedings which may be brought against the 
owner of the patent in regard to his rights under the patent. This is 
of perhaps greater importance in foreign countries where the law 
provides for the revocation of the patent, for compelling the owner of 
the patent under certain circumstances to grant licenses to others to 
use the invention, or for the expropriation of the invention by the state, 
than it is in the United States. No such proceedings are provided for 
b\^ the United States law, but that law provides for certain proceedings 
touching the right of a patentee to the patent granted to him, as, for 
instance, interference proceedings in the Patent Office under sec- 
tion 4904 of the Revised Statutes, procedure to secure a patent for an 
invention which may have been patented by another, under section 
4915 of the Revised Statutes, and suits on interfering patents under 
section 4918 of the Revised Statutes, in all of which the patentee or 
owner of the patent must be made a party and must be duly notiJied 
of the proceedings. In case the patentee or owner of the patent is a 
foreigner nonresident in the United States, the difficulties in serving 
legal notice upon him juslj not only be practically insurmountable, but 
even if notice be served upon him, it is open to serious doubt whether 
so long as he remained out of the country any United States court 
could take jurisdiction of the matter. An amendment to the law 
requiring nonresident applicants to fix a place for service within the 
United States, i. e., a place where the leaving of process or papers shall 
be equivalent to personal service, or to appoint a representative resi- 
dent within the United States on whom process or papers may be 
served with the same legal effect as if served personally on the 
patentee, would be in the interest of United States citizens and 
would not be an unreasonable requirement to demand of nonresident 
applicants and patentees, since it is but just that the patentee who 
must necessarily appeal to our courts to enforce his rights against 
infringers should be required to place himself constructively within 
the jurisdiction of our courts in order that others may have such reme- 
dies against him as may be provided for by law. 

We recommend that the law be amended so as to make it obligatory 
upon nonresident applicants and patentees to fix a place for service in 
this country or appoint a representative resident here on whom 
service can be made. 

CLASSES OF INVENTION EXCLUDED FROM PROTECTION. 

Under the United States patent law no class of useful inventions is 
excluded from protection. The same is true of the law of Great 

1 Appendix, Chap. XIV, p 294. 



32 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Britain and the British colonies generally, but many foreign countries 
exclude from protection one or more classes of invention. The class 
of inventions which more than any other is excluded from protection 
is that relating to medicines. It is excluded in Germany, France, 
Austria-Hungary, Italy, Japan, Denmark, Norway, Sweden, Portugal, 
Russia, and a number of other countries. Other classes of inventions 
excluded from protection in many countries are foods, chemical prod- 
ucts, and inventions relating to war material. ^ 

The exclusion from protection of inventions relating to medicines or 
foods does not generally extend to those relating to processes or appa- 
ratus for their manufacture. In all foreign countries which exclude 
chemical products from protection, except Switzerland, inventions 
relating to chemical processes may be patented, and in nearly all such 
countries it is expressly provided by law that a patent for a chemical 
process by which a new chemical product is made shall in effect cover 
such product, unless it is shown that such product was in fact made by 
some other process. ^ 

It has been urged before us, both at the hearings above referred to 
and in written communications laid before us, that the United States 
law should be amended to exclude from patent protection both medi- 
cines and chemical products generally, at least so far as such inven- 
tions are the inventions of subjects or citizens of the foreign countries 
which exclude these classes of invention from patent protection, and 
it has been contended that subjects or citizens of foreign countries 
should not be permitted to receive in this country patents for inven- 
tions which are not patentable in their own country. 

An amendment to the International Convention in the line of a change, 
such as is now urged, and also providing that the subject or citizen of 
a foreign country be required to pay in this country, for a patent the 
same fees which are required in his own country, was proposed at the 
Brussels conference in December, 1897, by the United States.^ This 
was not adopted, but it was suggested that such a change in our law 
could be made without its necessitating our withdrawal from the Con- 
vention, provided the requirement as to increased fees and the restric- 
tion as to patentable subject-matter be made to apply to all applicants, 
whether citizens of the United States or foreigners, who had prior to 
application in this country patented their inventions abroad. 

THE DATE GIVEN TO PATENTS IN FOREIGN COUNTRIES. 

In many foreign countries the patent dates from the date of appli- 
cation and not from the date of the grant, as in the United States. 
In certain countries in which the application is subjected to delay for 
examination the result is that the effective term of the protection is 
less than the nominal term. Under such laws there is no advantage to 
be gained by causing unnecessary delay in the issuance of the grant. 
The United States law is not intended to encourage delays in the prose- 
cution of applications, but the law does undoubtedly make it possible 
to delay the issuance of the patent and may result in practically extend- 
ing the monopoly for a longer period than was ever intended or con- 
templated, since however long the application may remain in the 

1 Appendix, Chap. XV, p. 306. 

2 Appendix, Chap. XV, sees. 2, 6, 7, and 9, pp. 306, 308, and 309. 

^ See proposition of the United States, Appendix, Chap. IV, p. 189. 



EEPORT OF COMMISSION PATENTS. 33 

Patent Office, and some applications for important inventions have 
remained there ten or even more years, the patent when granted secures 
the control of the invention for the full term of seventeen years from 
the date of grant. With a view of remedying this, the act of March 
3, 1897, required applications to be prosecuted without a delay of more 
than one year after any action by the office, instead of two years as 
before required, but even with this change, as repeated actions by the 
office are often required and as after each action the applicant has under 
the law a year in which to respond, it is evident that it is still possible 
to delay the issuance of a patent almost indefinitely if it is in the appli- 
cant's interest to do so. We do not, however, feel called upon to here 
recommend any further legislation in this regard. 

SECOND PATENT GRANTED TO FIRST INVENTOR. 

In this connection it should be noted that in regard to the term of 
the patent granted to the true inventor (the first inventor under the 
United States law) after a patent has already been granted to another 
for the same invention, the United States law differs from the laws of 
foreign countries. It not infrequently happens that a patent is granted 
to an applicant who claims to be entitled thereto as the first and 
original inventor and later another makes application for patent for 
the same invention and in proceedings authorized by law, it is adjudged 
that he, and not the patentee, is in fact the first and original inventor 
and that the person to whom the patent was granted was either not the 
inventor or, being an inventor of the invention in question, was not 
the first inventor. In such case, while the patent already granted can- 
not be revoked, there being in the United States law no provision for 
the revocation of a patent once granted, the Commissioner of Patents 
may under the law grant a patent, for the same invention covered by 
the patent already issued, to the later applicant.^ The patent so 
granted to the later applicant is necessarily granted for the full term 
of seventeen years. As the proceedings necessary to secure a final 
adjudication establishing the right of the later applicant to a patent 
may consume months or even years, the patent issued to him may be 
in force years after the patent first granted for the invention has 
expired, years after the date at which the public has the right to 
assume that the invention has become public property. 

Foreign countries generally provide that the real inventor shall not 
be deprived of his right to a patent by reason of the fact that a patent 
has been issued to another not legally entitled thereto. In some coun- 
tries the patent already granted is recognized as valid, but its owner- 
ship is transferred to the later applicant. In Great Britain and many 
other countries, including Japan, the patent first granted is revoked 
and a patent is granted to the later applicant. The patent so granted 
is not granted for the full term, but only for the unexpired portion of 
the term of the first patent granted.^ By this plan there is no exten- 
sion of the monopoly, and the public may be certain that a patented 
invention will become public property on the expiration of the first 
patent granted therefor, whether or not there may be changes in the 
ownership of the patent by transfer of the title or by the issuance of 
a new patent. 

iSec. 4904 Revised Statutes. ^^ppendix, Chap. XVI, p. 313. 



34 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

We recommend that in all cases in which a patent is granted for an 
invention already patented to another, it be provided that such patent 
be limited to expire with the expiration of the patent first granted. 

REVOCATION OF PATENTS. 

While in nearly all foreign countries the laws expressly provide for 
the revocation of patents found to have been illegally granted, in the 
United States law, as has been above stated, there is no such pro vi- 
sion. i We recognize the desirability of providing for the revocation 
or cancellation of such patents, but to do so would necessitate either 
giving to the Patent Office, as in Germany and a number of other 
countries, substantially judicial powers, or providing for proceedings 
in the courts. 

PATENT FEES. 

Under the United States patent law the fees payable for the exam- 
ination ($15) and for the issuance of the patent (|20) are all the fees 
required to keep the patent in force throughout the term for which it 
is granted. In foreign countries, and this is true of practically all 
countries which have patent laws, the fees payable prior to the issuance 
of the patent keep the patent in force for from one to four years only. 
Thereafter further fees or taxes must be paid or the patent then ceases to 
be in force. In most countries the annual fees increase each year and 
are in the aggregate an enormous tax upon patentees. For the last 
year of the term the tax in Great Britain is £14, or nearly |70; in 
Austria it is 340 florins, or about $136; in Russia, 400 rubles, or over 
1200. 

The primary object of such tax is revenue for the support of the 
government, but the effect of requiring the payment of these heavy 
taxes is to compel the forfeiture of the large majority of foreign 
patents long before the expiration of the term for which they were 
granted. In Great Britain the term for which patents are granted is 
fourteen years, but of those granted not over 30 per cent are kept in 
force after the fifth year, not over 11 per cent after the tenth year, 
and less than 7 per cent are kept in force for the full term. In other 
countries which have this system substantially the same results are 
bound to follow. This is claimed by some to be advantageous, because 
it effectually disposes of patents which have been granted for inven- 
tions which are impracticable and useless. This argument doubtless 
has force where, as in many foreign countries, patents are granted on 
application without preliminary examination as to novelty or utility. 
In this country the preliminary examination system is in force and 
patents are granted only for inventions which are found on examina- 
tion to be new and useful. The adoption of a system of taxation, 
however, we are satisfied would result in discouraging invention, par- 
ticularly invention by those whose means are insufficient to pay the 
taxes and who would be unable under such a system to hold their 
patents long enough to be able to dispose of them to advantage. The 
purpose of the patent law is to promote invention, and while it may be 
admitted that the owners of many of the patents heretofore granted 
could well afford to pay annual taxes to keep them in force, it is clear 
that the effect of a system of taxation would not only have been to 
prevent the taking out of many patents for useful invention, but would 
have caused the forfeiture of many which while of doubtful value 

' See U. S. V. Am. Bell Telephone Co., 167 U. S., 224. 



EEPORT OF COMMISSION PATENTS. 35 

during the first few years of their existence have eventually proved 
of great value and have been the foundation of important industrial 
enterprises. 

WORKING OF PATENTED INVENTION — COMPULSORY LICENSE. 

The requirement is found in the patent laws of most foreign coun- 
tries that an invention which is the subject of a patent be worked — 
that is, be manufactured on a commercial scale — in the country in which 
the patent is granted on pain of forfeiture of the patent. The purpose 
of this requirement is, primarily, to benefit the industries of the coun- 
try directly by requiring the patentee to carry on the manufacture of 
his invention in the country, as well as to prevent the injury to other 
manufacturers of articles of the same class which might arise from the 
introduction of articles embodying the invention made in other coun- 
tries to compete upon the market with the productions of such other 
manufacturers, or which might arise from a refusal to suppl}^ the pub- 
lic of that country with the patented article while fully satisfying the 
public needs in another country. 

The patent law of Great Britain, while not requiring that the inven- 
tion of a patent be worked in the country, provides against such an 
exercise of his rights by a patentee as might work an injury to the 
public by requiring that under certain circumstances the patentee may 
be compelled to grant licenses to other manufacturers. This law is as 
follows: 

It on the petition of any person interested it is proved to the Board of Trade that 
by reason of the default of a patentee to grant Ucenses on reasonable terms, 

(a) the patent is not being worked in the United Kingdom; or 

( b) the reasonable requirements of the public with respect to the invention can not 
be supplied; or 

(c) any person is prevented from working or using to the best advantage an inven- 
tion of which he is possessed, the Board may order the patentee to grant licenses on 
such terms as to the amount of royalties, security for payment, or otherwise, as the 
board, having regard to the nature of the invention and the circumstances of the 
case, may deem just, and any such order may be enforced by mandamus. 

This system is embodied in the recent patent laws of many of the 
British colonies and in the laws of a number of other countries.^ 

SUMMARY OF RECOMMENDATIONS. 

In addition to the changes in the patent laws above pointed out 
(page 27 above), as required to give full force and effect to the letter 
and spirit of the Convention, we recommend the following changes, 
suggested by the study of foreign patent laws, as desirable: 

1. To require nonresident applicants for patents to place themselves 
within the jurisdiction of the courts of this country. 

2. To provide that a disclosure of an invention in a foreign patent 
shall have the same effect as a bar to the grant of a patent in this 
country that is given to any other disclosure, that is, if printed, the 
patent shall have the effect of a printed publication; if not printed, 
the patent shall have no other effect than that of knowledge or use of 
the invention in a foreign country. 

3. To provide that an application for a foreign patent shall not be a 
bar to the grant of a patent to the applicant in this country. 

4. To provide that a patent granted on an invention previously pat- 
ented in this country to another, shall expire with the expiration of 
the first patent. 

^Appendix, Chap. XVII, p. 318. 



36 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

We have embodied these recommendations, together with those 
which we have before referred to as required by our treaty obliga- 
tions, in three proposed bills which are submitted herewith. 

A BILL to give effect to treaty stipulations relating to letters patent for inventions. 

Be it enacted hy the Senate and House of Representatives of the 
United States of America in Congress assembled^ An application for 
patent for an invention or discovery, or for a design filed in this 
count]y by any person who has previously regularly filed an appli- 
cation for a patent for the same invention, discovery, or design in 
a foreign country which by treaty, convention, or law aflfords simi- 
lar privileges to citizens of the United States, shall have the same 
force and effect as the same application would have if filed in this 
country on the date on which the application for patent for the same 
invention, discovery, or design was first filed in such foreign country, 
provided the application in this country is filed within seven months 
from the earliest date on which any such foreign application was filed. 
But no patent shall be granted on an application for patent for an 
invention or discover}^ or a design, which had been described in a 
printed publication in this or any foreign country more than two 
years before the date of the actual filing of the application in this 
country, or which had been in public use or on sale in this country 
for more than two years prior to such filling. 

Sec. 2. In case it shall be provided in any treaty, convention, or 
agreement to which the United States shall hereafter be a party, or in 
case any treatj^, convention, or agreement to which the United States 
is now a part}^ shall be so modified as to provide that an application 
for patent for an invention or discover}^, or for a design regularly 
filed in a foreign country which is a party to any sach treat}", conven- 
tion, or agreement, shall be accorded priority for a longer period than 
the period of seven months specified in the preceding section of this 
act, such period of priority shall be increased to equal the longer 
period so provided for immediately from and after the proclamation 
by the President of such treaty, convention, or agreement, or of the 
modification of such treaty, convention, or agreement. 

Sec. 3. Section fort3^-eight hundred and ninety-six of the Revised 
Statutes is amended by adding thereto the following sentence: 

The executor or administrator duly authorized under the law of any foreign 
country to administer upon the estate of the deceased inventor shall, in case the said 
inventor was not domiciled in the United States at the time of his death, have the 
right to apply for and obtain the patent. 

So that the section as amended shall read as follows: 

Sec. 4896. When any person, having made any new invention or discovery for 
which a patent might have been granted, dies before a patent is granted, the right 
of applying for and obtaining the patent shall devolve on his executor or adminis- 
trator, in trust for the heirs at law of the deceased, in case he shall have died intes- 
tate; or if he shall have left a will disposing of the same, then in trust for his 
devisees, in as full manner and on the same terms and conditions as the same might 
have been claimed or enjoyed by him in his lifetime; and when the application is 
made by such legal representatives the oath or affirmation required to be made shall 
be go varied in form that it can be made by them. The executor or administrator 
duly authorized under the law of any foreign country to administer upon the estate of 
the'deceased inventor shall, in case the said inventor was not domiciled in the United 
States at the time of his death, have the right to apply for and obtain the patent. 

Sec. 4. Section forty-eight hundred and ninety-two of the Revised 
Statutes is amended by inserting after the words " notary public" the 



BILLS PROPOSED PATENTS. 37 

words "judge or magistrate having an official seal and authorized to 
administer oaths," so that the section so amended shall read: 

Sec. 4892. The applicant shall make oath that he does verily believe himself to be 
the original and first inventor or discoverer of the art, machine, manufacture, com- 
position, or improvement for which he solicits a patent; that he does not know and 
does not believe that the same was ever before known or used; and shall state of 
what country he is a citizen. Such oath may be made before any person within the 
United States authorized by law to administer oaths, or, when the applicant resides 
in a foreign country, before any minister, charge d'affaires, consul, or commercial 
agent holding commission under the Government of the United States, or before any 
notary public, judge, or magistrate having an official seal and authorized to admin- 
ister oaths of the foreign country in which the applicant may be. 

Sec. 5. Section forty-nine hundred and two of the revised Statutes 
is repealed. 

Sec. 6. This act shall take effect upon its passage (but caveats filed 
as provided for in section forty-nine hundred and two of the Revised 
Statutes prior to the passage of this act shall be operative for the term 
for which they were filed). 

A BILL to revise the patent laws of the United States. 

Be it enacted hy the Senate and House of Representatives of the United 
States of America in Congress assembled: Section forty-eight hundred 
and eighty-six of the Revised Statutes, as amended by act of Congress 
approved March 3, 1897, is amended by erasing therein the words 
"patented or," and by inserting on line — , after the words "described 
in any," the words "printed patent or other," so that the section so 
am^.nded shall read as follows; 

Sec. 4886. Any person who has invented or discovered any new and useful art, 
machine, manufacture, or composition of matter, or any new and useful improve- 
ments thereof, not known or used by others in this country before his invention or 
discovery thereof, and not described in any printed patent or other printed publica- 
tion in this or any foreign country before his invention or discovery thereof, or more 
than two years prior to his application and not in public use or on sale in this country 
for more than two years prior to his application, unless the same is proved to have 
been abandoned, may, upon payment of the fees required by law and other due pro- 
ceeding had, obtain a patent therefor. 

Sec. 2. Section forty-nine hundred and twenty of the Revised Stat- 
utes, as amended by act of Congress approved March 3, 189T, is 
amended by erasing from the third clause of said section the words 
"patented or," and by inserting after the words "described in some" 
the words " printed patent or other," so that the section so amended 
shall read as follows: 

Sec. 4920. In any action for infringement the defendant may plead the general 
issue, and, having given notice in writing to the plaintiff or his attorney thirty days 
before, may prove on trial any one or more of the following special matters: 

First. That for the purpose of deceiving the public the description and specification 
filed by the patentee in the Patent Office was made to contain less than the whole 
truth relative to his invention or discovery, or more than is necessary to produce the 
desired effect; or. 

Second. That he had surreptitiously or unjustly obtained the patent for that which 
was in fact invented by another, who was using reasonable diligence in adapting and 
perfecting the same; or. 

Third. That it had been described in some printed patent or other printed publi- 
cation prior to his supposed invention or discovery thereof, or more than two years 
prior to his application for a patent therefor; or. 

Fourth. That he was not the original and first inventor or discoverer of any mate- 
rial and substantial part of the thing patented; or. 

Fifth. That it had been in public use or on sale in this country for more than two 
years before his application for a patent, or had been abandoned to the public. 



38 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

And in notices as to proof of previous invention, knowledge, or use of the thing 
patented, the defendant shall state the names of the patentees and the dates of their 
patents, and when granted, and the names and residences of the persons alleged to 
have invented or to have had the prior knowledge of the thing patented, and where 
and by whom it had been used; and if any one or more of the special matters alleged 
shall be found for the defendant, judgment shall be rendered for him with costs. 
And the like defenses may be pleaded in any suit in equity for relief against an 
alleged infringement; and proofs of the same may be given upon like notice in the 
answer of the defendant, and with the like effect. 

Sec. 3. Section forty-eight hundred and eighty-seven of the Revised 
Statutes, as amended by act of Congress approved March 3, 1897, is 
amended by erasing all that portion which follows the words " in a 
foreign countrj^," and substituting in lieu thereof the following: 

Unless said foreign patent was granted more than two years prior to the filing of 

the application in this country, in which case no patent shall be granted in this 
country. 

So that the section so amended shall read as follows: 

Sec. 4887. No person otherwise entitled thereto shall be debarred from receiving 
a patent for his invention or discovery, nor shall any patent be declared invalid by 
reason of its having been first patented or caused to be patented by the inventor or 
his legal representatives or assigns in a foreign country, unless said foreign patent 
was granted more than two years prior to the fihng of the application in this coun- 
try, in which case no patent shall be granted in this country. 

Sec. 4. Section forty-nine hundred and four of the Revised Statutes 
is amended by adding thereto the following sentence: 

But in case a patent has already been granted to the adverse party, the patent 
granted to the party adjudged to be the prior inventor shall be limited to expire 
with the expiration of the term for which such patent was granted. 

So that the section so amended shall read as follows: 

Sec. 4904. Whenever an application is made for a patent which, in the opinion of 
the Commissioner, would interfere with any pending application, or with any unex- 
pired patent, he shall give notice thereof to the applicants or applicant and patentee, 
as the case may be, and shall direct the primary examiner to proceed to determine 
the question of priority of invention. And the Commissioner may issue a patent to 
the party who is adjudged the prior inventor, unless the adverse party appeals from 
the decision of the primary examiner or of the board of examiners in chief, as the 
case may be, within such time, not less than twenty days, as the Commissioner shall 
prescribe. 

But in case a patent has already been granted to the adverse party, the patent 
granted to the party adjudged to be the prior inventor shall be limited to expire 
with the expiration of the term for which the patent to such adverse party was 
granted. 

Sec. 5. This act shall take effect immediately. 
A BILL respecting applicants for patents not residing in the United States. 

Be it enacted hy the Senate and House of Representatives of the United 
States of America in Congress assemhled: Section forty-eight hundred 
and ninety-three of the Revised Statutes is amended by adding thereto 
the following sentence: 

Apxjlicants for patent not residing in the United States shall, before the issuance 
of the patent, designate, by a notice in writing filed in the Patent Office, some person 
residing within the United States on whom process or notice of proceedings brought 
under sections 4904, 4915, or 4918 of the Revised Statutes, or under other laws of the 
United States relating to patents, may be served with the same force and effect as if 
served upon the applicant or patentee in person. 

So that the section so amended shall read as follows: 

Sec. 4893. On the filing of any such application and the payment of the fees required 
by law, the Commissioner of Patents shall cause an examination to be made of the 
alleged new invention or discovery; and if on such examination it shall appear that 
the claimant is justly entitled to a patent under the law, and that the same is suffi- 



BILLS PROPOSED PATETTTS. 39 

ciently useful and important, the Commissioner shall issue a patent therefor. Appli- 
cants for patent not residing in the United States shall, before the issuance of the 
patent, designate, by a notice in writing filed in the Patent Office, some person resid- 
ing within the United States on whom process or notice of proceedings brought under 
sections 4904, 4915, or 4918 of the Revised Statutes, or under other laws of the United 
States relating to patents, may be served with the same force and effect as if served 
upon the applicant or patentee in person. 

Sec. 2. Section f ortj^-eight hundred and ninety-eight of the Revised 
Statutes as amended by the act of March 3, 1897, is amended by adding 
the following sentence: 

Before any such assignment, grant, or conveyance shall be recorded in the Patent 
Office the assignee or assignees, if not residing in the United States, shall designate, 
by a notice in writing filed in the Patent Office, some person residing within the 
United States on whom process or notice of proceedings brought under sections 
4904, 4915, or 4918 of the Revised Statutes, or under the laws of the United States 
relating to patents, may be served with the same force and effect as if served upon 
such assignee or assignees in person. 

So that the section so amended shall read as follows: 

Sec. 4898. Every patent or any interest therein shall be assignable in law by an 
instrument in writing, and the patentee or his assigns or legal representatives may 
in like manner grant or convey an exclusive right under his patent to the whole or 
any specified part of the United States. An assignment, grant, or conveyance shall 
be void as against any subsequent purchaser or mortgagee for a valuable considera- 
tion, without notice, unless it is recorded in the Patent Office within three months 
from the date thereof. 

If any such assignment, grant, or conveyance of any patent shall be acknowledged 
before any notary public of the several States or Territories, or the District of Colum- 
bia, or any commissioner of the United States circuit court, or before any secretary 
of legation or consular officer authorized to administer oaths or perform notarial 
acts under section seventeen hundred and fifty of the Revised Statutes, the certificate 
of such acknowledgment, under the hand and official seal of such notary or other 
officer, shall be prima facie evidence of the execution of such assignment, grant, or 
conveyance. 

Before any such assignment, grant, or conveyance shall be recorded in the Patent 
Office the assignee or assignees, if not residing in the United States, shall designate, 
by a notice in writing filed in the Patent Office, some person residing within the 
United States on whom process or notice of proceedings brought under sections 4904, 
4915, or 4918 of the Revised Statutes, or under the laws of the United States relating 
to patents, may be served with the same force and effect as if served upon such 
assignee or assignees in person. 

Sec. 3. Every person who owns an undivided interest in any unex- 
pired patent heretofore granted or which may hereafter be granted in 
this country who does not reside in the United States shall designate, 
by a notice in writing filed in the Patent Office, some person residing 
within the United States on whom process or notice of proceedings 
brought under sections 4904, 4915, or 4918 of the Revised Statutes, or 
under other laws of the United States relating to patents, may be served 
with the same force and effect as if served upon said owner of an 
undivided interest in person. 

Sec. 4. This act shall take effect the first day of July, nineteen hun- 
dred and one. If any person required by this act to designate a per- 
son residing in the United States on whom process or notice may be 
served as provided for by this act shall fail to file in the Patent Office 
the notice of such designation required by this act prior to the date at 
which this act takes effect, he shall be considered to have elected resi- 
dence in the District of Columbia, and publication of process or notice 
of proceedings brought under any of the Revised Statutes referred to 
in this act, or under other laws of the United States relating to patents, 
for four successive weeks in the Official Gazette of the Patent Office 
shall be equivalent to service of such process or notice. 
S. Doc. 20 4* 



TRADE AND OTHER MARKS AND TRADE OR COKMERCIAL 

NAMES. 

We are also required by the act under which we were appointed to 
revise and amend the laws of the United States concerning trade and 
other marks and trade or commercial names so far as the same relate 
to matters which are contained in or are affected by the Convention for 
the Protection of Industrial Property, concluded at Paris, March 20, 
1883,^ to which we have heretofore referred, and to the Agreements 
under said convention concluded at Madrid, April Itt, 1891,^ and the 
treaties of the United States and laws of other nations relating to trade 
and other marks and trade or commercial names, and to report our 
reasons for an}^ recommendations which we may make. 

The United States is a member of the Union created by the Con- 
vention for the Prot^ection of Industrial Propert}^, concluded at Paris, 
March 20, 1883, of which the other members are Belgium, Brazil, 
Denmark, Dominican Republic, France, Great Britain, Italy, Japan, 
The Netherlands, Norway, Portugal, Spain, Serbia, Sweden, Switzer- 
land, and Tunis, as before stated, and has not become a member of 
the subsidiary Unions created by the Agreements of Madrid above 
referred to. 

The United States has made separate treaties, conventions, and 
declarations relating in whole or in part to trademarks with Austria- 
Hungary, Belgium, Brazil, Denmark, France, Germany, Great Bri- 
tain, Italy, Japan, Russia, Servia, and Spain. ^ 

Substantially, every civilized nation has promulgated laws relating 
to the regulation of the use of trademarks in commerce.* 

As directed by the said act we have revised and amended the laws 
mentioned therein in the manner prescribed, and submit the same 
herewith in the form of a proposition for the regulation of marks 
used in commerce, accompanied by a preliminary statement of its 
scope and the changes made by it, and notes to the several sections. 

We here propose to review all the treaties, conventions and declara- 
tions to which the United States is a party, commencing with the 
Convention of Paris, 1883, and the Agreements thereunder for the 
repression of false indications of origin and for the international reg- 
istration of trademarks, and following with the treaties, conventions, 
and declarations with single foreign governments. We thereafter pro- 
pose to review certain salient features of foreign trademark laws which 
are of interest to our citizens and which may aid in coming to a con- 
clusion as to what should be incorporated into such a law and the 
powers of the General Government in regard to the same. 

^Appendix, Chap. II, sec. 1, p. 146. 
^Appendix, Chap. II, sees. 3 and 4, pp. 158, 160. 
=^ Appendix, Chap. XVIII, p. 325. 
^Appendix, Chap. XIX, p. 340 
40 



EEPORT OF COMMISSION TRADEMARKS. 41 

CONVENTION OF PARIS, MARCH 20, 1883. 

The Convention for the Protection of Industrial Property, concluded 
at Paris, March 20, 1883, includes within its terms the products of 
industry, properly so called, as well as the products of agriculture 
(wines, grains, fruits, cattle, etc.), and mineral products which enter 
into commerce (mineral waters, etc.).^ 

Article 2 provides that the subjects or citizens of each of the con- 
tracting States shall enjoy in all of the other States of the Union for 
the Protection of Industrial propertj^, so far as concerns trade or com- 
mercial marks, and the commercial name, the advantages which the 
respective laws thereof accord to subjects or citizens.^ That is, the 
United States shall grant within its territory to citizens or subjects of 
other members of the Industrial Property Union the same rights as it 
grants to its own citizens. These rights are secured b}^ an act approved 
Slarch 3, 1881, and entitled "An act to authorize the registration of 
trademarks and protect the same," supplemented by an act approyed 
August 5, 1882, and entitled "An act relating to the registration of 
trademarks." These acts are reciprocal and fulfill the requirements 
of the Convention so far as they go. Trademarks and the commercial 
name are also protected by many State statutes and by the common 
law existing in the several States of the United States, to which an 
alien may resort without regard to the protection which his own Gov- 
ernment extends to citizens of the United States. While it may be con- 
tended that subjects or citizens of the other contracting States enjoy 
in the United States, so far as concerns trade and other marks and the 
commercial name, the advantages which the respective laws thereof 
accord to subjects or citizens under the conditions above stated, i. e., 
a limited national law and complete laws in many of the States of the 
United States, it is not true, in our opinion, that they receive protec- 
tion from the United States as a nation to the extent to which they 
are entitled and which they expect in granting similar rights to our 
citizens. That national and not State protection is sought by the 
other members of the Industrial Property Union is shown by the reso- 
lutions of the French delegation offered at the conference at Brussels 
in 1897, viz: 

That the Government of the United States of America attempt in every way to 
provide, as soon as possible, Federal legislation which will replace local legislation 
in reference to trademarks, and ^dll insure an easier and more efficient suppression 
of trademark infringements.^ 

A casual examination of the trademark laws of the other States 
of the Union for the Protection of Industrial Property* will show 
that the existing trademark statutes of the United States do not give 
that protection to trademarks which such laws of other countries give 
to their own citizens or subjects and therefore to citizens of the United 
States. 

By article 12 of the Convention, the United States agrees to estab- 
lish a special service of industrial property and a central depot for 
giving information to the public concerning trade or commercial marks. 
If this article means the establishment of an office merely, the United 
States has complied with it, since the United States already had an 

^ Final Protocol of Convention, clause 1 (Appendix, Chap. I, sec. 1), p. 152. 

2 Appendix, Chap. I, sec. 1, p. 148. 

^Appendix, Chap. V, p. 192. 

* Appendix, Chaps. XXI, XXII, XXIII, and XXIV, pp. 349, 352, 363, and 373. 



42 REVISION OP STATUTES RELATING TO PATENTS, ETC. 

office, called the Patent Office, charged with the registration of trade- 
marks before its adhesion to the Convention. But the discussions of 
the conferences held under the Convention show that this is not the 
understanding of the meaning of article 12 by the other members of 
the Union. They claim it to be a pledge for the making of laws appli- 
cable to the protection of industrial property, including marks. 

Section 11 of the tariff act of 1897 provides for the protection of 
the trademarks of any domestic manufacture or manufacturer by 
forbidding entry into the United States of any article of imported 
merchandise bearing such marks. The advantages of this law are not 
extended to foreigners. 

Article 3. This article gives the privileges granted by the Convention 
to persons domiciled or having industrial or commercial establishments 
upon the territory of one of the States of the Industrial Propert}^ Union 
to the same extent as to a subject or citizen of such State. 

The act of March 3, 1881, contains a proviso that owners of trade- 
marks used in commerce with foreign nations or with the Indian 
tribes located in any foreign country which by treaty, convention, or 
law affords similar privileges to citizens of the United States, may 
obtain registration, etc. It therefore fulfills the requirements of this 
article. 

Article tt provides that any person who shall have regularly depos- 
ited an application for a trademark in one of the contracting States 
shall enjoy, for the purpose of making the deposit in the other States 
and under the reserve of the rights of third parties, a right or priority 
of three months in Europe and four months in countries beyond the 
sea,^ during which a deposit subsequently made in one of the other 
States of the said Union can not be invalidated by another deposit or 
by the employment of the mark. 

No provision is made in the law of 1881 for the precedence of a 
prior applicant in another State of the Union for the Protection of 
Industrial Property over an applicant for registration here. 

It is to be noted that article 4 excepts out from its provisions the 
rights of third parties. We understand this to mean those in the 
United States who obtain title to a mark b}^ use before application 
abroad. It is also to be noted that the use of the mark after the 
deposit of the application in one of the States of the Union will not 
invalidate the claim to registration during the period of four months 
thereafter. Now, as a trademark can not be registered under the 
present law except to the first user, the registration abroad should be 
given the effect of a user of the mark in this country at the date of 
the first application. 

Article 6 is as follows: 

Every trade or commercial mark regularly deposited in the country of origin shall 
be admitted to deposit and so protected in all the other countries of the Union. 

Shall be considered as country of origin, the country where the depositor has his 
principal establishment. 

If this principal establishment is not situated in one of the countries of the Union, 
shall be considered as country of origin that to which the depositor belongs. 

The deposit may be refused if the object for which it is asked is considered con- 
trary to morals and to public order. 

Final protocol 4, which is to be read with article 6, is as follows: 

4. Paragraph 1 of article 6 is to be imderstood in the sense that no trade or commer- 
cial mark shall be excluded from protection in one of the states of the Union by the 

^ This includes the United States. 



REPORT OF COMMISSION TRADEMARKS. 43 

mere fact that it may not satisfy, in respect to the signs composing it, the condi-~ 
tions of the laws of this state, provided that it does satisfy in this regard the laws of 
the country of origin, and that it has been in this latter country duly deposited. 
Saving this exception, which concerns only the form of the mark, and under reserva- 
tion of the provisions of the other articles of the convention, the domestic legislation 
of each of the states shall receive its due application. 

In order to avoid all misinterpretation, it is imderstood that the use of public 
armorial bearings and decorations may be considered contrary to public order in the 
sense of final paragraph of article 6. 

The above provisions of article 6 as modified by protocol 4 furnished 
one of the principal subjects for debate at the Brussels conference. 
The differences of opinion in the conference were so great that the 
matter was left open for consideration at a future session. 

These provisions are essentially French in their origin and are 
intended to secure the free circulation and protection of marks — good 
in the country of origin — in all other countries, no matter what may 
be their inherent defects, viewed from the standpoint of any other 
country than the country of origin, and no matter what the articles 
distinguished by the particular marks. A similar provision is embodied 
in a treaty between Russia and Switzerland concluded as late as 1899.^ 
Substantially the same provision seems to be contained in article 1 of 
the treaty of November 25, 1871, with Austria-Hungary;^ article 15 
of the treaty of March 6, 1875, with Belgium^ (superseded by the 
treaty of April 7, 1884); the treaty of April 16, 1869, with France;' 
treaty of January 27, 1868, with Russia^ (superseded by the declaration 
of November 24, 1874), and the treaty of October 14, 1881, with 
Serbia.' 

This article is wholly disregarded by Great Britain. Its provisions 
were invoked in the case of an American mark, ''Syrup of Figs," duly 
registered here, but registration was there refused on the ground that 
the mark registered here did not come within the definition of a trade- 
mark contained in the British law.^ 

The trademark act of 1881 seems to fulfill the requirements of 
article 6 in the following language: " But no alleged trademark shall 
be registered unless the same * * * is within the provision of a 
treaty, convention, or declaration with a foreign nation." 

A provision more clearly following the Convention is embodied in 
the proposed statute drafted by us. 

Article 7 is as follows: 

The nature of the production upon which the trade or commercial mark is to be 
affixed can not in any case be an obstacle to the deposit of the mark. 

This article is not to be understood as requiring trademarks which 
are to be applied to articles, the trade in which is contrary to public 
order or good morals, to be registered or protected. It is understood 
to be intended to prevent refusal of registration of marks applied to 
products which in certain countries are government monopolies, as, for 
instance, marks applied to tobacco, which in certain European coun- 
tries is a government monopoly. As in this country no trademarks 
are refused registration on account of the products to which they are 
applied, it is clear that no amendment to the present law is necessary 
to give effect to this article. 

^ Appendix, Chap. IX, sec. 5, p. 260. 
2 Appendix, Chap. XVIII. 

^ See position of British delegates to Conference of 1897, stated in Appendix, 
Chap. VI, p. 214. 



44 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Section 8 of the act of 1881, which forbids suits in any case where 
the trademark is used in any unlawful business or upon any article 
injurious in itself or which mark has been used with the design of 
deceiving the public in the purchase of merchandise or under any 
certificate of registry fraudulently obtained, is not antagonistic to 
article 7 of the Convention. 

Article 8 is as follows: 

The commercial name shall be protected in all the countries of the Union without 
obligation of deposit, whether it forms part or not of a trade or commercial mark. 

There is no provision by statute of the United States for the pro- 
tection of the commercial name. The United States as a nation or 
government does not protect commercial names, and so far does not 
fulfill the requirements of the Convention, although the several States 
do. We have therefore included these in our proposed bill. ^ 

Article 9 is as follows: 

Every production bearing unlawfully a trade or commercial mark, or a commer- 
cial name, may be seized upon importation into those of the States of the Union in 
which such mark or such commercial name has a right to legal protection. 

The seizure shall take place either at the instance of the public prosecutor or of the 
interested party, conformably to the domestic legislation of each State. 

There is no provision in any Federal law of the United States for 
seizure of productions bearing unlawfully a trade or commercial mark, 
etc., in favor of the subjects or citizens of the other States of the Union 
for the Protection of Industrial Property. An amendment to this 
section was proposed at the Brussels conference, as follows: 

In the States whose legislation does not admit of seizure on importation, such 
seizure may be replaced by the prohibition of importation. 

The authorities shall not be required to effect seizure in case of goods in transit.^ 

There is a provision in the tariff act of 1897 for the exclusion of 
goods bearing the marks of domestic manufacturers only. We have 
included in the proposed bill a section to replace section 11 of the tariff 
act of 1897 extending its operation to citizens or subjects of the other 
States of the said Union. ^ 

Article 10 is as follows: 

The provisions of the preceding article shall be applicable to every production 
bearing falsely as indication of origin, the name of a stated locality when this indica- 
tion shall be joined to a fictitious commercial name or a name borrowed with fraud- 
ulent intention. 

Is reputed interested party every manufacturer or trader engaged in the manufac- 
ture or sale of this production, when established in the locality falsely indicated as 
the place of export. 

What we have said in regard to article 9 is applicable here also. 
There is no statute providing for seizure of products bearing falsely, 
as indications of origin, the name of a stated locality. It is provided 
in the tariff' law of 1897 as follows: 

Sec. 8. That all articles of foreign manufacture, such as are usually or ordinarily 
marked, stamped, branded, or labeled, and all packages containing such or other 
imported articles, shall, respectively, be plainly marked, stamped, branded, or labeled 
in legible English words in a conspicuous place, so as to indicate the country of their 
origin and the quantity of their contents; and until so marked, stamped, branded, 
or labeled they shall not be delivered to the importer. 

This is not the case contemplated by article 10. That article is 
intended to reach products bearing fictitious names in imitation of the 

^ Section 2 of proposed bill, p. 65. 
^ Section 33 of proposed bill, p. 77. 



REPORT OF COMMISSION TRADEMARKS. 45 

usual names of a neighborhood to which the goods are falsely attrib^ 
uted. An amendment to this article was adopted at the conference at 
Rome, 1885, but was not ratified. At the conference of Madrid a sub- 
sidiary agreement was adopted which became binding on those States 
only which signed it. The subject is further discussed hereinafter in 
connection with that agreement. 

Sections 3 and 33 of the proposed act are intended to carry this article 
into effect.^ 

Article 11 is as follows: 

The High Contracting parties engage between themselves to accord a temporary 
protection to patentable inventions, to industrial designs or models, as well as to 
trade or commercial marks for the productions which may figure at official or 
officially recognized International Exhibitions. 

The only statute of the United States on the subject of international 
exhibitions granted immunity to citizens of another country for the 
infringement of any patent granted in the United States, or of any 
trademark or label registered in the United States, '' where the act 
complained of is or shall be performed in connection with the exhibition 
of any article or thing at the World's Columbian Exposition at 
Chicago."' 

This law went further than was required by article 11 of the Con- 
vention. That article contemplated the protection against infringe- 
ment, i. e., "temporary protection" for the short period of the 
exhibition, and we may presume that it was intended also to prevent 
during that period the registration by a stranger of a trademark 
attached to an exhibited article. It was not intended to suspend the 
laws as to infringement of trademarks and excuse such infringement 
during the exhibition. An amendment to this article, adopted by the 
Brussels conference, is as follows: 

Aet. 11. The High Contracting parties shall accord conformably to the legislation 
of each country a temporary protection to patentable inventions, to industrial designs 
or models, as well as to trademarks, for the productions which may figure at official 
or officially recognized International Expositions organized upon the territory of one 
of them. 

It is apparent from this examination of the Convention of Paris of 
1888 that a new trademark statute superseding the statute of 1881 is 
required in order to give effect to the provisions of the Convention. 

AGREEMENTS OF MADRID, APRIL 14, 1891. 

The Convention was amended at a conference held at Rome in 1886, 
but the amendments failed of ratification by the powers forming the 
industrial Union because unanimous consent could not be obtained. At 
the succeeding conference of Madrid in 1890, the simple expedient was 
adopted of proposing to the members of the Union subsidiary agree- 
ments which should be binding on those only who signed the same. 
The agreements proposed by the Madrid conference related (1) to the 
prevention of false indications of origin, and (2) to the international 
registration of trademarks. The United States is not a party to either 
of these agreements. 

^ Sections 3 and 33 of proposed bill, pp. 65 and 77. 
2 Statutes at Large, chaDter 33, approved April 6, 1893. 



46 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

AGREEMENT CONCERNING THE SUPPRESSION OF FALSE INDICATIONS OF 
ORIGIN ON merchandise/ 

The following members of the Union created by the principal con- 
vention have entered into an agreement between themselves for the 
prevention of false indications of origin of goods, viz, Brazil, France, 
Great Britain, Guatemala, Portugal, Spain, Switzerland, and Tunis. 

Article 1 of the Agreement is as follows: 

All goods bearing a false indication of origin, in which one of the contracting States, 
or a place situated therein, shall be directly or indirectly indicated as being the 
country or place or origin, shall be seized on importation into any of the said States. 

The seizure may also take place either in the State where the false indication of 
origin has been applied, or in that into which the goods bearing the false indication 
may have been imported. 

If the law of any State does not permit seizure on importation, such seizure shall 
be replaced by prohibition of importation. 

If the law of any State does not permit seizure in the interior, such seizure shall be 
replaced by the remedies assured in such case to natives by the law of such State. 

This article is of such interest to our people that we have introduced 
a clause into the proposed act to enforce its provisions.^ 

Section 8 of the tariff act of 1897 requires marking of goods imported 
into the United States with the name of the country from which 
imported, but does not extend its protection to the name of the place, 
e. g. , it requires the name of France to be marked on goods made in 
France and forbids the use of the name falsely, but does not protect 
the name of Lyons, a city of France. Besides it is an obligatory mark, 
and not a mark for the protection of the citizens or subjects of the 
foreign nation. 

There is a view of this subject which is of peculiar interest to the 
manufacturers of the United States. Take, for example, butter which 
because of its superior qualit}^ is sold in Europe as Danish butter. 
The latter had a reputation in Europe when our butter was intro- 
duced, and the first sales under that name were therefore fraudulent 
as to the bm^er, and since the butter is as good as Danish butter these 
sales prevented the fact becoming known and a reputation and demand 
being formed for the American butter. The price follows the repu- 
tation and demand. On the other hand, the sale of butter as American 
butter, which is of inferior quality, will work great injury to our 
country in reducing the reputation of its butter, and therefore the 
price. 

The interest of our people in the subject is shown by the adoption 
by many of our communities of marks for commercial purposes, e. g., 
Omaha, Kansas City, etc. 

We are of the opinion that the United States should make use of 
this agreement before the names of certain of her products become 
generic, as, for example, champagne has become to the great l®ss of 
the champagne districts of France. 

Article II relates to persons at whose instance seizure may be made, 
and that it shall not be made in case of goods in transit. 

Article III is as follows: 

The present stipulations are not intended to prevent the vendor from indicating 
his name or address upon goods coming from a country other than that where the 
sale takes place, but in such case the address or the name must be accompanied by 
a clear indication in legible characters of the country or place of manufacture or 
production. 

^Appendix, Chap. II, sec. 3, p. 158. 
2 See section 33 of proposed bill, p. 77. 



REPORT OF COMMISSIOIT TRADEMARKS. 47 

Article IV makes provision for cases where names of places have 
become generic as follows: 

The tribunals of each country will decide what appellations, on account of their 
generic character, do not fall within the provisions of the present arrangement, 
regional appellations concerning the origin of products of the vine being, however, 
not comprised in the reserve provided for by the present article. 

AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF 

TRADEMARKS. 

The following members of the Union for the Protection of Indus- 
trial Property have signed the Agreement adopted at Madrid concern- 
ing the international registration of trademarks, viz, Belgium, Brazil, 
France, Italy, the Netherlands, Portugal, Spain, Switzerland, and 
Tunis. 

Article I of the agreement is as follows: 

The subjects or citizens of each of the contracting States may secure in all the 
other States the protection of their trademarks accepted at the depository in the 
country of origin, by means of the deposit of the said marks at the international 
bureau at Berne made by the intervention of the government of the said country of 
origin. 

We have prepared a section of the trademark bill to provide pro- 
ceedings to facilitate the taking advantage by our citizens of this 
agreement whenever it shall be adhered to by the United States.^ 

It is unnecessary here to reproduce the remaining articles of the 
Agreement. They will be found in the Appendix.^ 

The arguments in favor of the adhesion of the United States to the 
Agreement given by the International Bureau of Berne will be found 
in the Appendix.^ 

The cost of registration in foreign countries through individual 
agencies is now so great that we would refer to the fact that the cost 
of registration in all the States adhering to this subsidiary Union, and 
named above, is only 100 francs (|20), in addition to the fee which may 
be established by the United States Government.* 

It is to be understood that the United States would receive no fee for 
the registration of marks forwarded to it by the International Bureau at 
Berne from other States of the subsidiary Union. 

TREATIES, CONVENTIONS AND DECLARATIONS BETWEEN THE UNITED 
STATES AND OTHER SINGLE POWERS. 

RUSSIA. 

An article respecting trademarks additional to the treaty of navi- 
gation and commerce of December 6-18, 1832, with Russia was con- 
cluded at Washington January 27, 1868; proclaimed October 15, 1868. 
The additional article other than the preamble and provision for 
termination is as follows: 

The high contracting parties desiring to secure complete and efficient protection 
to the manufacturing industry of their respective citizens and subjects, agree that any 
counterfeiting in one of the two countries of the trademarks affixed in the other on 

^See section 41 of proposed bill, p. 78. 
^Appendix, Chap. II, sec. 4, p. 160. 
^Appendix, Chap. II, sec. 6, p. 166. 
* Appendix, Chap. II, sec. 6, p. 168. 



48 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

merchandise to show its origin and quaUty shall be strictly prohibited and repressed, 
and shall give ground for an action of damages in favor of the injured party, to be 
prosecuted in the courts of the country in which the counterfeit shall be proven. 

The trademarks in which the citizens or subjects of one of the two countries may 
wish to secure the right of property in the other must be lodged exclusively, to wit, 
the marks of citizens of the United States in the Department of Manufactures and 
Inland Commerce at St. Petersburg, and the marks of Russian subjects at the Patent 
Office in Washington. ^ 

A declaration regarding the above article was signed March 28, 1874, 
proclairoed November 24, 1874. It is as follows: 

The Government of the United States of America and the Government of His 
Majesty the Emperor of all the Russias, having recognized the necessity of defining 
and rendering more efficacious the stipulations contained in the additional article of 
the 15th-27th January, 1868, to the Treaty of Commerce and Navigation concluded 
between the United States of America and Russia on the 6th-18th December, 1832, 
the undersigned, duly authorized to that effect, have agreed upon the following 
arrangements : 

Article 1. With regard to marks of goods or of their packages, and also with regard 
to marks of manufacture and trade, the citizens of the United States of America shall 
enjoy in Russia, and Russian subjects shall enjoy in the United States, the same 
protection as native citizens. 

Art. 2. The preceding article, which shall come, immediately into operation, shall 
be considered as forming an integral part of the treaty of the 6th/18th December, 
1832, and shall have the same force and duration as the said treaty.-^ 

The declaration is an addition only to the original article. It makes 
certain the fact that citizens of the United States shall enjoy the same 
protection as Russian subjects, but it does not change the obligation 
of either party to prohibit false marking, etc. , as stated in the original 
article. 

This treaty requires the enactment of some law by the Congress of 
the United States in distinction from any State legislation for the pro- 
hibition and suppression of the counterfeiting of trademarks of Rus- 
sian subjects in the United States. It requires at least some national 
law, to which the subjects of Russia can resort, more far-reaching than 
the law of 1881. 

This treaty requires the Russian subject to lodge his trademark in 
the Patent Office at Washington, but the Commissioner of Patents, as 
the trademark law is at present construed, does not consider that he 
has authority to register Russian trademarks, unless they are such 
marks as could be registered by citizens of the United States. 

It is of advantage to the citizens of the United States that a rule 
corresponding to the treaty should prevail. Our commerce has become 
so extensive abroad that our marks should have full protection every- 
where in order to reap the full advantage of such trade. For example, 
single names such as ''Sapolio," "Listerine," and other advertised 
marks here are not trademarks under the laws of some of the coun- 
tries of Europe, and therefore these articles can not be exported there 
with the assurance of protection against infringement, and if export 
is desired some other trademark must be adopted. We can well 
receive and record the few Russian marks that will be offered, such as 
they are, and without making them conform to our rules. 

BELGIUM. 

In the same year that the agreement was concluded with Russia an 
additional article to the treaty of commerce and navigation of July 

1 Appendix, Chap. XVIII, sec. 11, p. 335. 



REPORT OF COMMISSION TRADEMARKS. 49 

17, 1858, concerninp^ trademarks, was concluded with Belgium. (Con- 
cluded December 20, 1868; proclaimed July 30, 1869.) The additional 
article is as follows: 

The high contracting parties, desiring to secure complete and efficient protection 
to the manufacturing industry of their respective citizens, agree that any counterfeit- 
ing in one of the two countries of the trade-marks affixed in the other on merchan- 
dise, to show its origin and quahty, shall be strictly prohibited, and shall give ground 
for an action of damages in favor of the injured party, to be prosecuted in the courts 
of the country in which the counterfeit shall be proven. 

The trade-marks in which the citizens of one of the two countries may wish to 
secure the right of property in the other must be lodged, to wit: The marks of citi- 
zens of the United States at Brussels in the office of the clerk of the tribunal of 
commerce; and the marks of Belgian citizens at the Patent Office in Washington. 

It is understood that if a trade-mark has become public property in the country of 
its origin it shall be equally free to all in the other country.^ 

The treaty to which this was an additional article was abrogated, 
and a new ''treaty of commerce, navigation, and trademarks " with 
Belgium was concluded March 8, 1875, in which was inserted an Arti- 
cle XV in substantially the same language as above.^ National, as dis- 
tinguished from State, trade-marks are clearly pointed out by the last 
paragraph of the article. It is necessary for the statute to decide what 
trade-marks have become public property in all the States of the 
United States; e. g., "Matzoon" has been held in New York State to 
be a good trade-mark,^ and the United States circuit court in Chicago, 
administering the common law of Illinois, has held it to be public 
property.* This treaty seems to be still in force, yet a separate con- 
vention with Belgium concerning trademarks only was concluded 
April 7, 1884; proclaimed July 9, 1884. It is as follows: 

The President of the United States of America and His Majesty the King of the 
Belgians being desirous of securing reciprocal protection for the trade-marks and trade 
labels of their respective citizens or subjects within the dominions or territories of 
the other country, have resolved to conclude a convention for that purpose, and have 
appointed as their plenipotentiaries: * ^ * 

Article 1. Citizens of the United States in Belgium and Belgian citizens in the 
United States of America shall enjoy, as regards trade-marks and trade labels, the 
same protection as native citizens, without prejudice to any privilege or advantage 
that is or may hereafter be granted to the citizens of the most favored nation. 

Art. 2. In order to secure to their marks the protection provided for by the fore- 
going article, the citizens of each one of the contracting parties shall be required to 
fulfill the law and regulations of the other. (Appendix, Chap. XVIII, sec. 2. ) 

If the treaty of 1875 is in force, the same observations must be made 
in regard to it as were made in regard to the treaty with Russia.^ 
They ma}^ also be applied, because the convention of 1884 contains the 
most-favored-nation clause. 

In either case the treaty refers to the United States of America and 
its laws and not to local laws. 

FRANCE. 

In 1869 a separate convention concerning trademarks was con- 
cluded with France. (Concluded April 16, 1869; proclaimed July 6, 
1869.) It is as follows: 

The United States of America and His Majesty the Emperor of the French, desir- 
ing to secure in their respective territories a guaranty of property in trademarks, 

1 Appendix, Chap. XVIII, sec. 2, p. 326. *72 Fed. Rep., 1010. 

2Id.,p. 327. 5 Ante, p. 48. 

315 Misc. R. (N. Y.),300. 



50 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

have resolved to conclude a special convention for this purpose, and have named as 
their plenipotentiaries: * ^ * ^ ^ , 

Article I. Every reproduction in one of the two countries of trademarks affixed 
in the other to certain merchandise to prove its origin and quahty is forbidden, and 
shall give ground for an action for damages in favor of the injured party, to be prose- 
cuted in the courts of the country in which the counterfeit shall be proven, just as 
if the plaintiff were a subject or citizen of that country. 

The exclusive right to use a trademark for the benefit of citizens of the United 
States in France, or of French subjects in the territory of the United States, can 
not exist for a longer period than that fixed by the law of the country for its own 
citizens. , . . 

If the trademark has become public property in the country of its origm, it shall 
be equally free to all in the other country. 

Art. II. If the owners of trademarks residing in either of the two countries 
wish to secure their rights in the other country they must deposit duplicate copies 
of those marks in the Patent Office at Washington, and in the clerk's office of the 
tribunal of commerce of the Seine at Paris. ^ 

In this case the language of the prior treaties is not used, and the 
citizen of France is secured the same rights only as if he were a citizen 
of the United States. 

French citizens are to deposit duplicate copies of their marks in the 
Patent Office at Washington. Under the present law as at present 
construed they can not deposit them unless they are such marks as 
would be registrable to citizens of the United States. 

AUSTRIA-HUNGARY. 

In 1871 a convention with Austria-Hungary, relative to trademarks 
alone, was concluded. (Concluded November 25, 1871; ratifications 
exchanged at Vienna April 22, 1872; proclaimed June 1, 1872.) It is 
as follows: 

The United States of America and his Majesty the Emperor of Austria, King of 
Bohemia, etc., and Apostolic King of Hungary, desiring to secure in their respective 
territories a guarantee of property in trade-marks, have resolved to conclude a special 
convention for this purpose, and have named as their plenipotentiaries: * * * 

Article I. Every reproduction of trade-marks which in the countries or territories 
of the one of the contracting parties are afiixed to certain merchandise to prove its 
origin and quality is forbidden in the countries or territories of the other of the con- 
tracting parties, and shall give to the injured party ground for such action or pro- 
ceedings to prevent such reproduction, and to recover damages for the same, as may 
be authorized by the laws of the country in which the counterfeit is proven, just as 
if the plaintiff were a citizen of that country. 

The exclusive right to use a trade-mark for the benefit of citizens of the United 
States in the Austro-Hungarian Empire or of citizens of the Austro-Hungarian 
Monarchy in the territory of the United States can not exist for a longer period than 
that fixed by the law of the country for its own citizens. If the trade-mark has 
become public property in the country of its origin, it shall be equally free to all in 
the countries or territories of the other of the two contracting parties. 

Art. 11. If the owners of trade-marks, residing in the countries or territories of 
the one of the contracting parties, wish to secure their rights in the countries or ter- 
ritories of the other of the contracting parties, they must deposit duplicate copies of 
those marks in the Patent Office at Washington and in the Chamber of Commerce 
and Trade in Vienna and Pesth. ^ 

The language of this convention is very similar to that of the declara- 
tion with Russia,^and the same observation may be made in regard to 
it. It is also similar to that of the treaty with Belgium, 1875, in that 
the trademark is to become public property in both countries at the 
same time, and the remarks there made as to the necessity of national 
control, drawn from the language, apply here also. 

1 Appendix, Chap. XVIII, sec. 5, p. 330. 
'■^Appendix, Chap. XVIII, sec. 1, p. 325. 
3 Ante, p. 48. 



REPOET OF COMMISSION TRADEMARKS. 51 

GERMANY. 

In 1871 a convention was entered into with the German Empire. It 
is entitled in the collection of treaties and conventions published by 
the United States, " Convention Respecting Consuls and Trademarks." 
(Concluded December 11, 1871; proclaimed June 1, 1872.) The con- 
vention is much broader than the title indicates, and has but one article 
in eighteen on trademarks, viz: 

Art. XVII. With regard to the marks or labels of goods, or of their packages, and 
also with regard to patterns and marks of manufacture and trade, the citizens of 
Germany shall enjoy in the United States of America, and American citizens shall 
enjoy in Germany, the same protection as native citizens.^ 

The present trademark statute appears to satisfy this treaty; but it 
seems hardly just that the Germans should be relegated to the protec- 
tion offered in forty-five possible ways by forty-five different States, 
when the citizens of the United States need look to but one law, viz, 
that of the German Empire. This remark is applicable to all the 
treaties granting reciprocal rights. 

GREAT BRITAIN. 

In 1877 a declaration respecting trademarks was concluded between 
Great Britain and the United States. (Concluded October 24, 1877; 
ratification advised by Senate May 22, 1878; ratified by President 
May 25, 1878; proclaimed July 17, 1878.) It is as follows: 

The Government of the United States of America and the Government of Her 
Majesty the Queen of the United Kingdom of Great Britain and Ireland, with a 
view to the reciprocal protection of the marks of manufacture and trade in the two 
countries, have agreed as follows: 

The subjects or citizens of each of the contracting parties shall have, in the domin- 
ion and possessions of the other, the same rights as belong to native subjects or citi- 
zens, or as are now granted or may hereafter be granted to the subjects and citizens 
of the most-favored nation, in everything relating to property in trade-marks and 
trade-labels. 

It is understood that any person who desires to obtain the aforesaid protection 
must fulfill the formalities required by the laws of the respective countries.^ 

This declaration, except so far as expanded by the most-favored- 
nation clause, is satisfied by the present trade-mark law of 1881. It 
is to be noted that the language would seem to imply that citizens of 
the United States can register in Great Britain and subjects of the 
Queen of Great Britain can register in the United States only what 
are recognized as good trademarks in the country where registration 
is sought. It may happen, therefore, that a citizen of the United 
States may have a perfectly good trademark in the United States, 
registered under the law of 1881, and still not be able to register the 
same mark in Great Britain, if some other American or some subject 
of the Queen applies first to register the United States registered mark 
in England, since the English law grants the registration to the first 
applicant if he is the first user in Great Britain. This would not be 
done in the United States. The first user in Great Britain would be 
given in the United States the registration over a subsequent adopter 
here under the theory that the first to adopt and use has the prior right. 

The treaty seems to be more than satisfied by the act of 1881. 

1 Appendix, Chap. XVIII, sec. 6, p. 331. 

2 Appendix, Chap. XVIII, sec. 7, p. 331. 



52 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Does not fulfilling formalities mean the mere compliance with the 
forms for registration and not compliance with the definition of a 
trademark ? ^ 

BRAZIL. 

An agreement concerning trademarks with Brazil was concluded 
September 24, 1878; proclaimed June 17, 1879. 
The agreement recites: 

The Government of the United States of America and the Government of His 
Majesty the Emperor of Brazil, with a view to the reciprocal protection of the marks 
of manufacture and trade in the two countries, have agreed as follows: 

The citizens or subjects of the two high contracting parties shall have in the 
dominions and possessions of the other the same rights as belong to native citizens 
or subjects in everything relating to property in marks of manufacture and trade. 

It is understood that any person who desires to obtain the aforesaid protection 
must fulfill the formalities required by the laws of the respective countries. ^ 

This agreement is satisfied by the present trademark law of 1881. 

SERBIA. 

A convention for facilitating and developing commercial relations 
with Serbia was concluded at Belgrade, October 14, 1881; proclaimed 
December 27, 1882, in which was included an article as follows: 

Art. XII. The high contracting parties, desiring to secure complete and efficient 
protection to the manufacturing industry of their respective citizens and subjects, 
agree that any counterfeiting in one of the two countries of the trademarks affixed 
in the other on merchandise to show its origin and quality shall be strictly prohib- 
ited and repressed, and shall give ground for an action of damages in favor of the 
injured parties, to be prosecuted in the courts of the country in which the counterfeit 
shall be proven. 

The trademarks in which the citizens or subjects of one of the two countries may 
wish to secure the right of property in the other must be registered exclusively, to 
wit, the marks of citizens of the United States in the tribunal of commerce at Bel- 
grade and the marks of Serbian subjects in the Patent Office at Washington, subject 
to the conditions and restrictions prescribed by the laws and regulations of the coun- 
try in which the trade-marks are registered.^ 

This seems to be a copy of the agreement with Russia, 1868,* except 
that the marks of the citizens of the United States are to be registered 
in "the tribunal of commerce at Belgrade," and the addition of the 
clause, ''Subject to the conditions and restrictions prescribed by the 
laws and regulations of the country in which the trademarks are 
registered." The remarks made in regard to the Russian agreement 
apply here also, except so far as modified by the last clause of the last 
sentence. Whether we give more than we receive depends upon the 
meaning of the undefined words in the law of 1881, "a legal trade- 
mark." What Serbia protects is stated in Appendix to be: 

Every mark serving to distinguish products of industry or articles of commerce from 
similar products or articles is considered a trade-mark. 

No person can enjoy the exclusive right to a mark which is in general use in com- 
merce, or which consists of a single letter, figure, or word. The reproduction of the 
national arms as a trade-mark is as a rule interdicted. Marks which have an immoral 
character, or might be prejudicial to public order, can not be admitted to registration. 

^ See report of the British delegates. Appendix, Chap. VI, p. 214. 

2 Appendix, Chap. XVIII, sec. 3, p. 328. 

3 Appendix, Chap. XVIII, sec. 12, p. 336. 
*Ante, p. 48. 



REPORT OF COMMISSION TRADEMARKS. 53 

ITALY. 

A declaration for the reciprocal protection of marks of manufacture 
and trade with Italy was concluded June 1, 1882 ; proclaimed March 
19, 1881. It is as follows : 

The Government of the United States of America and the Government of His Maj- 
esty the King of Italy, wishing to provide for the reciprocal protection of the marks 
of manufacture and trade, have agreed as follows: 

The citizens of each of the high contracting parties shall enjoy, in the dominions 
and possessions of the other, the same rights as belong to native citizens, or as are now 
granted or may hereafter be granted to the subjects or citizens of the most favored 
nation, in everything relating to property in trade-marks and trade-labels. 

It is understood that any person who desires to obtain the aforesaid protection 
must fulfill the formalities rec^iired by the laws of the respective countries.^ 

This declaration is in substantially the same form as that with Great 
Britain,^ and the remarks made as to that declaration are also applica- 
able here. 

SPAIN. 

A convention concerning trademarks with Spain was concluded 
June 19, 1882; proclaimed April 19, 1883. It is as follows: 

The President of the United States of Ajnerica and His Majesty the King of Spain, 
being desirous of securing reciprocal protection for the trade-marks and manufac- 
tured articles of their respective citizens or subjects within the dominions or territo- 
ries of the other country, have resolved to conclude a convention for that purpose, 
and have appointed as their plenipotentiaries: * * * 

Article I. The citizens and subjects of each of the two contracting parties shall 
enjoy, in the dominions and possessions of the other, the same rights as the natives 
of the country in everything relating to the ownership of trade-marks, industrial de- 
signs or models, or of manufactures of any kind. 

Art. II. Persons desiring to secure the aforesaid protection shall be obliged to 
comply with the formalities required by the laws of the respective countries.^ 

The convention is given for the better understanding of the diplo- 
matic history of our relations with foreign nations on the subjects 
being considered. 

DENMARK. 

A convention relating to trademarks with Denmark was concluded 
June 15, 1892; proclaimed October 12, 1892 It is as follows: 

With a view to secure for the manufacturers in the United States of America and 
those in Denmark the reciprocal protection of their Trade Marks and Trade Labels, 
the undersigned, duly authorized to that effect, have agreed on the following dispo- 
sitions: 

Article I. The subjects or citizens of each of the High Contracting parties shall in 
the dominions and possessions of the other have the same rights as belong to native 
subjects or citizens, in everything relating to Trade Marks and Trade Labels of every 
kind. 

Provided always, That in the United States the subjects of Denmark, and in Den- 
mark the citizens of the United States of America, can not enjoy these rights to a 
greater extent or for a longer period of time than in their native country. 

Art. II. Any person in either country desiring protection of his Trade Mark in the 
dominions of the other must fulfill the formalities required by the law of the latter, 
but no person being a subject or citizen of one of the contracting States shall be enti- 
tled to claim protection in the other by virtue of the provisions of this convention, 
unless he shall have first secured protection in his own country in accordance with 
the laws thereof.* 

1 Appendix, Chap. XVIII, sec. 8,p.332. =^ Appendix, Chap. XVIII, sec. 13. p. 337. 

2 Ante, p. 61. * Appendix, Chap. XVIII, sec. 4, p. 329. 



54 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

JAPAN. 

A treaty of commerce and navigation between the United States of 
America and Empire of Japan was concluded November 22, 1894; pro- 
claimed March 21, 1895. This treaty contained an article on trade- 
marks, joined with patents and designs, as follows: 

Art. XVI. The citizens or subjects of each of the High Contracting Parties shall 
enjoy in the territories of the other the same protection as native citizens or subjects 
in regard to patents, trademarks, and designs, upon fulfillment of the formalities 
prescribed by law.^ 

This article was by special convention concluded January 13, 1897; 
proclaimed March 9, 1897, made immediately operative: 

The President of the United States of America and* His Majesty the Emperor of 
Japan, being desirous of securing immediate reciprocal protection for patents, trade- 
marks, and designs, have resolved to conclude a Convention for that purpose, and 
have appointed as their Plenipotentiaries: 

* * * * -x- -x- * 

Article XVI of the Treaty of Commerce and Navigation between the United States 
of America and Japan, concluded at Washington on the twenty-fourth day, the 
eleventh month, the twenty-seventh year of Meiji, corresponding to the twenty - 
second day of November, eighteen hundred and ninety-four of the Christian Era, 
shall have full force and effect from the date of the exchange of ratifications of this 
Convention. 

FOREIGN LAWS RELATING TO TRADE AND OTHER MARKS. 

Foreign laws relating to marks may be divided into two classes, 
viz, (1) those which make registration declaratory of right to the 
mark, and (2) those which make registration attributive of right to 
the mark. 

The laws of France^ belong to the first class, and the validity of a 
registered mark may be questioned in the French courts, notwith- 
standing registration. The laws of Germanj^,^ etc., belong to the 
second class, and the validity of the registered mark can not be ques- 
tioned collaterally, since the registration is the basis of every right. 
No protection, therefore, is afforded to unregistered marks by the 
laws of the latter countries, even if they are such marks as may be 
registered, and the question of prior use is never raised, since the 
title is not based on use. The result of the attributive system is 
beneficial in this, that any person desiring to make use of a particular 
mark may, by examining the register, determine whether or not that 
mark is already appropriated by another; and if he does not find 
the mark, he may himself register it and use it with the certainty that, 
so long as he keeps his registration in force, he can not be interfered 
with in the use of the mark by a prior user or by any other person. 

Such' a law is open to the objection that it permits well-known but 
unregistered marks to be registered by and become the property of 
any person who chooses to apply for registration, but in answer to 
this objection it must be said that such a result is due not to anything 
in the law, but to the laches on the part of the original owner of the 
mark. It can not be considered unreasonable to require anyone who 
seeks to protect his rights to notify the public of his claim promptly, 
if he would maintain that claim. 



1 Appendix, Chap. XVIII, sec. 9, p. 332. 
'^Appendix, Chap. XXIII, p. 363. 
3 Appendix, Chap. XXII, p. 352. 



EEPORT OF COMMISSION TRADEMAEKS. 55 

Under the class of declaratory laws of which those of France have 
been given as an example, registration is a prerequisite of right to sue 
for a violation of the exclusive use of the mark. In the case of 
attributive laws registration is necessarily so. 

There is great variation in the character of the marks which may be 
registered. In some countries single words can not be registered, no 
matter whether newly coined or not; in others single words other than 
the names of persons and places may be registered, and the latter may 
be registered m a special form. Coats of arms and marks not subject 
to the rules of good morals can not be registered. 

Commercial or trade names as a rule are the subject of special pro- 
tection and do not receive that provided for trademarks — so also the 
names of localities. 

Many foreign trademark laws, as well as those of many of the States 
of the United States, provide for the registration of trade-marks which 
are used by associations of workingmen or of manufacturers or dealers 
who, by reason of being located in the same region, or for other 
reasons, have agreed upon a particular mark to distinguish the place 
of manufacture or origin, or the workmen engaged on a particular 
manufacture.^ 

In those countries where the registration of a mark is attributive of 
property in the registered mark, it is apparent that use before appli- 
cation for registration need not be made essential and that the regis- 
tration of marks which are intended to be used may be allowed. In 
Great Britain a mark may be and is frequently registered in all classes, 
although used in one only, for the purpose of preventing that con- 
fusion which sometimes happens because of the use of the same trade- 
mark by different manufacturers on goods sold through the same deal- 
ers, although of different classes.^ Article 4 of the Convention of Paris, 
1883, refers to registration and not to use. It seems to refer to the 
case of a merchant who, desiring to establish a trade in a certain prod- 
uct, registers the mark he proposes to use in connection therewith 
and seeks thereby to escape the danger and expense of the use of the 
mark before a determination as to its validity and its right to regis- 
tration. If Congress can pass a law to carry into effect the treaties 
and conventions which we have entered into on the subject of trade- 
marks, it can provide for the case of the foreign manufacturer who 
has registered at home before use and seeks also to register here, 
and vice versa for the citizens of the United States who seek registra- 
tion abroad in anticipation of foreign trade. We further see no dis- 
tinction in the regulation of commerce by means of marks, between 
the filing of a mark in use or intended to be used. The filing of the 
mark is merely notice giving certain rights in case of use. 

The formalities required for registration in foreign countries are 
usually few and simple.* Practically nothing is required beyond a 
statement sufficiently full to identify the applicant, a facsimile or speci- 
men of the mark, and a statement of the class of goods to which it is 
or is intended to be applied. No elaborate description is required, nor 
is it necessary for the applicant to attempt to distinguish the essential 
features of his mark. The application may in many of these countries 
be made upon a simple form furnished by the registry office, which 

^Appendix, Chap. XXI, p. 349, etc. 

2 By section 75 of the law of Great Britain appHcation for registration is made the 
equivalent of public use. See Appendix, p. 375. 

^See Trademark law of France, Appendix, Chap. XXIII, p. 363. 

S. Doc. 20 5* 



56 REVISION OF STATUTES RELATING TO PATENTS, ETC 



can be filled out by any person of intelligence/ In Great Britain a 
disclaimer is required in certain cases and is the subject of differences 
of opinion among jurists. Some take the ground that the effect of the 
disclaimer is to allow the trademark to be evaded by the dishonest, 
and say that the courts in order to avoid its effects are taking jurisdic- 
tion of cases where the defendant is said to be passing off his goods for 
those of another. 

The fees for registration are in most cases very small. In 14 out of 
26 principal countries the fees are less than $5, averaging less than 
$3; in 4 others, less than $10; in 6 others, less than $14 (in 4 of these 
6). The fees for renewal are less than |3. In only 2 countries are the 
fees for registration greater than in the United States, viz, Argentine 
Republic |40, and Canada |30, for general trademarks. 

The term of registration in most countries is comparatively short. 
It is 10 years in 17 of 28 principal countries providing for registration; 
not over 15 years in 6 others; 20 years in 3 others; 25 years or longer 
in 2 countries. 

Registration may be renewed in all of them indefinitely on payment 
of a fee generally less than $5. If not renewed, as a general rule, all 
rights secured by registration lapse. In some cases, as in Portugal, 
the mark falls into the public domain and may at once be adopted and 
registered by another, or may be adopted and registered by any other 
after the expiration of a definite period, e. g., in Germany, after 2 
years. 

The registered mark under most laws is transferable in connection 
with the business and good will only. This provision is considered to 
be in the interest of the public. To permit a trademark to be trans- 
ferred from a manufacturer without anything else, or to permit the 
owner of the mark to license others to use it is promotive of fraud 
upon the purchasing public. 

It is generally provided in foreign trademark laws that the foreign 
owner of a trademark shall be entitled to registration of and protec- 
tion for his trademark, but conditional on the validity of the mark in 
the country where applicant for registration resides, proved by the 
registration there. 

It is provided in many foreign trademark laws that an applicant for 
registration of a trademark shall in his application appoint a repre- 
sentative in the country,^ or, as in the trademark laws of Great 
Britain, shall "give the comptroller an address for service."^ In 
other words, these laws recognize the necessity for the owner of a 
trademark who seeks the protection of the laws of the country to so 
far place himself within the jurisdiction of the courts of the country 
that legal notice of any proceedings adverse to the rights claimed by 
him may be served upon him in the country. 

All the foreign trademark laws considered contain provisions for 
punishing by fine or imprisonment those who willfully and fraudu- 
lently counterfeit or imitate the registered trademark of another. 
Such laws also provide for suits for damages and some even compel 
the publication of the decision, if against the defendant, at his expense. 

^See blank form used for international registration. (Appendix, Chap. II, sec. 6, 
p. 176. 

2 Appendix, Chap. XIV, p. 294. 

3 Patents, etc., act of 1888, p. 297. 



EEPORT OF COMMISSION TKA DEM ARKS. 57 

PRESENT NECESSITY OF REGISTRATION OF ALL MARKS USED IN 

COMMERCE. 

The s^^stem of adoption and use of marks on goods to distinguish 
them from other goods of the same kind (without registration) has 
become practically a pitfall for all who are engaged in commerce. In 
a directory of stove marks made a few ^^ears ago the familiar marks of 
an acorn, a star, etc. , were each stated to be used b}^ from two to 
fifteen manufacturers. This, no doubt, occurred because of the bulky 
character of the article, which prevented a maker in one section of the 
country from confusing his stoves with those in another section. But 
the means of communication are now so easy and trade so great that 
this noninterference is not likely to continue, if it has not already 
stopped, unless both users of the means of commerce are very small. 
But as the law now stands the small user of commerce for his wares 
is entitled to the same rights as the large, and it is not an infrequent 
occurrence that the user of commerce in a large way finds himself con- 
fronted with the fact that an extremely small dealer has a right which 
he, the large dealer, can neither purchase nor disregard, to his great 
loss. 

The operation of the British marks act of 1862 showed practically 
the difficult}^ arising from nonregistration. Hardingham, an English 
text writer, says, speaking of the law of 1862: 

It was almost impossible to ascertain whether any particular device which a man- 
ufacturer might wish to adopt as a distinguishing mark for his goods was novel, or 
had already been appropriated. This led to the act of 1875, which, in effect, provides 
that no emblem or distinctive de^dce applied to articles of manufacture or commerce 
need be recognized as a trade-mark unless it be duly registered.^ 

The first section of the British trademarks registration act of 1875 
is as follows: 

1. A register of trade-marks, as defined by this act and of the proprietors thereof, 
shall be established, under the superintendence of the commissioner of patents, and 
from and after the first day of July, one thousand eight hundred and seventy-six, a 
person shall not be entitled to institute any proceedings to prevent the infringement 
of any trade-mark, as defined by this act, until and unless such trade-mark is regis- 
tered in pursuance of this act.^ 

Again the same thought is expressed in the reasons accompanying 
the proposed trademark law presented to the Chamber of the States 
General of The Netherlands in 1879. It is translated in British Com- 
mercial Report No. 12. of 1879, as follows: 

The State should afford an opportunity to the public to acquire authentic informa- 
tion with regard to those marks, for the exclusive right to which application may 
have been made. The means afforded for depositing and reporting marks in places 
accessible to the public conduce to this object. By this means the precise nature of 
the mark itself, as well as the date from which the general employment of such mark 
ceases to be allowed, will be exactly determined. In this way it will be possible for 
persons interested to prove their right in a similar and inexpensive manner, while 
other persons can secure themselves against the miintentional assumption of a mark 
similar to one already used by another person. 

The pecuniary loss to the innocent user of a mark already adopted 
and used by another is very serious and generally unjust; but a fine or 
imprisonment under a penal statute where there is no means of deter- 
mining surely what are the existing trademarks would be unbearable, 

1 Hardingham Trade-Marks, London, 1881, p. 1. 

2 38and39 Vict.,ch. 9L 



58 REVISION OF STATUTES RELATING TO PATENTS, ETC. 



and is the chief argument against such a statute, which might well be 
made for the punishment of the willful and dishonest infringer. 

All foreign trademark laws provide for registration and reward the 
registrant by making the registration a prerequisite to suit. This is 
under both the attributiv^e and declaratory systems of which we have 
before spoken. There may be registration and the court may still 
haA^e the right to pass upon the character of the mark as now. 

Besides, the treaties of the United States with Russia, France, 
Austria-Hungary, Brazil, Great Britain, Belgium, Serbia, Italy, and 
Japan all require the citizen of the United States to register in the 
country where his commerce or trade is carried on in order to obtain 
the rights of citizens there. In the case of Russia we required regis- 
tration in the United States of Russian marks before we had passed a 
law to provide for the registration of the same. 

REGULATION OF COMMERCE THROUGH THE REGULATION OF MARKS 
HISTORICALLY CONSIDERED. 

As early as 1791 the proper practice under the Constitution was 
indicated by Thomas Jefferson, then Secretary of State, to whom was 
referred the petition of a sailcloth maker of Massachusetts for the 
registration of his trademark. 

December 9, 1791. 

The Secretary of State, to whom was referred by the House of Representatives the 
petition of Samuel Breck and others, proprietors of a sail-cloth manufactory in Bos- 
ton, praying that they may have the exclusive privilege of using particular marks for 
designating the sail-cloth of their manufactory, has had the same under considera- 
tion, and thereupon 

Reports, That it would, in his opinion, contribute to fidelity in the execution of 
manufactures, to secure to every manufactory, an exclusive right to some mark on 
its wares, proper to itself. 

That this should be done by general laws, extending equal right to every case to 
which the authority of the Legislature should be competent. 

That these cases are of divided jurisdiction: Manufactures made and consumed 
within a State being subject to State legislation, while those which are exported to 
foreign nations, or to another State, or into the Indian Territory, are alone within 
the legislation of the General Government. 

That it will, therefore, be reasonable for the General Government to provide in 
this behalf by law for those cases of manufacture generally, and those only which 
relate to commerce with foreign nations, and among the several States, and with the 
Indian Tribes. 

And that this may be done by permitting the owner of every manufactory to enter 
in the record of the court of the district wherein his manufactory is, the name with 
which he chooses to mark or designate his wares, and rendering it penal to others to 
put the same mark on any other wares. ^ 

We deem the report of Jefferson conclusive on the question of the 
connection between the regulation of commerce under the Constitution 
and the securing ''to every manufactory an exclusive right to some 
marks on its wares proper to itself." Jefferson was intimatel}^ 
acquainted with the causes, mainly commercial, which led to the 
adoption of the Constitution. The note to it, at page 17, Revised 
Statutes, says: 

In January, 1786, the legislature of Virginia passed a resolution providing for the 
appointment of five cooimissioners, who, or any three of them, should meet such 
commissioners as might be appointed in the other States of the Union, at a time and 
place to be agreed upon, to take into consideration the trade of the United States, to 
consider how far a uniform system in their commercial regulations may be necessary 
to their common interest and their permanent harmony, and to report to the several 
States such an act relative to this great object as, when ratified by them, will enable 
the United States in Congress effectually to provide for the same. 

^Jefferson's Complete Works, Washington, 1854, vol. 7, p. 563. 



REPORT OF COMMISSION TRADEMARKS. 59 

The Articles of Confederation had onlj been adopted July 9, 1778, 
and contained an Article IV, as follows: 

The better to secure and perpetuate mutual friendship and intercourse among the 
people of the different States "^ * ^ the people of each State shall enjoy therein 
(in every other State) all the privileges of trade and commerce, subject to the same 
duties, impositions, and restrictions as the inhabitants thereof respectively, provided 
that such restrictions shall not extend so far as to prevent the removal of property 
imported into any State to any other State of which the owner is an inhabitant. * "^ * 

This was a treaty in effect, and applied the State restrictions as to 
marking, etc. , which then existed. 

That there was not sufficient demand at the time of Jefferson's report 
or for seventy-nine years afterwards for a law to put into effect his 
recommendations does not at all modify the authority of the report on 
the subject of the power of the Congress. Laws requiring the mark- 
ing of certain goods, e. g., tobacco, flour, pork, etc., before sale or ship- 
ment, existed in the Colonies and were continued b}^ the States after 
the adoption of the Constitution, but no State law was enacted "to pre- 
vent fraud in the use of false stamps and labels," i. e., marks used in 
trade, until 1845, in New York. State laws under different titles but 
all looking toward the protection of the public by means of the regu- 
lation of marks on goods were passed in Connecticut in 1847; Penn- 
sylvania, 1847; Massachusetts, 1850; Ohio, 1859; Iowa, 1860; Michigan, 
1863; Oregon, 1864; Nevada, 1865; Kansas, 1866; Maine, 1866; Mis- 
souri, 1866. These are all the State statutes on the subject of optional 
marks used in the commerce within the State making the law until the 
national law of 1870. 

In the preface of his Treatise on the Law of Trade-marks (Albany, 
N. Y. , 1860) Francis H. Upton says that no other book had been pre- 
viously published on the subject. The next book was Cox's American 
Trademark Cases (Cincinnati, 1871), purporting to publish nearly all 
the trade-mark cases tried in this country in the civil courts in chro- 
nological order. The first trademark case proper reported was decided 
in the year 1837. This was followed by one case in each of the years 
1844, 1846, 1847, 1848, two in the year 1849, one in 1850, one in 1851, 
one in 1853, three in 1854, two in 1855, three in 1856, six in 1857, one 
in 1859, six in 1860, one in 1861, and two in 1862, one in 1863, and one 
in 1864, three in 1865, seven in 1867, seven in 1868, four in 1869, and 
three in 1870, making a total of 62, with which were included ^ve 
others about newspaper names, four about hotel names, and others 
about names of stores, etc. 

CONSTITUTIONALITT OF PROPOSED ACT. 

The draft of the act submitted to Congress is, we submit, within 
the constitutional authority of Congress. 

The Trademark Cases (100 U. S., 82) ruling upon the act of 1870 
held (1) that authority to solely legislate did not fall within the pro- 
vision of the Constitution relating to inventions and copyrights, and 
(2) that the act in question, relating as it did to all trademarks, 
whether interstate or intrastate, was broader than the constitutional 
authority. It was expressly pointed out that an act relating to trade- 
marks applicable only to commerce with foreign nations and with the 
Indian tribes and to interstate commerce was not ruled upon. 

Every article to which the mark, trademark, or commercial name, 
provided in our draft of an act is to be applied, is, of course, the sub- 
ject-matter of commerce, foreign, interstate, or with the Indian tribes. 
The effect of the proposed bill will be to prohibit the taking of these 



60 REVISION 01^ STATUTES RELATING TO PATENTS, ETC. 

goods into interstate or foreign commerce unless they bear such char- 
acter of marks as are provided for. The ultimate purpose of such 
marks is to so identify and individualize the articles of commerce that 
the purchaser may know, without question, the country of their origin, 
and the identity of the manufacturer, and, to a large extent (for 
qualit}^ frequently depends on the identity of the manufacturers), the 
quality and character of the article. Identification b}^ means of a 
registered mark prevents an unscrupulous competitor from imposing 
upon the public articles different from what the public may have pre- 
viously known, and naturally supposed itself to be bu3dng. It is in 
this respect a protective measure, not simply of the manufacturer, but 
of the purchaser as well. 

It has frequently been held that commerce in merchandise may, for 
the protection and purposes suggested, be regulated by the police 
powers of the several States. (Pittsburg & S. Coal Co. v. State of 
La,, 156 U. S., 590; Turner v. State, 107 U. S., 38; Patapsco Guano 
Co. ^^ Bd. of Agriculture of N. C, 171 U. S., 315.) It is also in effect 
ruled, we think, in Schollenberger v. Pennsylvania (171 U. S. , 1), in in re 
KoUock (165 U. S. 526), and in Addyston Pipe & Steel Co. v. United 
States (175 U. S., 211) that where sucfi protective legislation is made to 
apply to articles that enter into interstate or foreign commerce the 
power of Congress under the interstate commerce clause is plenary. 
Indeed, it would be an anomally, and a departure from all settled concep- 
tion of the interstate commerce clause, if regulation relating to national 
and foreign commerce, which in its nature must be national, could 
not be brought under the authority of that clause. If the State may, 
in these matters of regulation, either by restriction or by conditional 
allowance, affect commerce within its own territor}^, what argument 
can there be against a like power in the National Government, under 
the commerce clause, when the need of a national regulation becomes 
apparent. The proposed act regulates solely the production, control, 
and disposition of property in its relation to interstate and foreign 
commerce. 

If Congress should conclude not to pass this proposed act in its entirety, 
but to confine itself to an act providing for registration as declaratory 
only, we submit that the foregoing views are still applicable. Such regis- 
tration is, in its essence, although not to so apparent an extent, pre- 
ventive of fraud upon the public by the identification of articles of 
commerce with their proper owners. It is a measure not simpl}^ for 
the benefit of the producer; it is equally beneficial to the purchasing 
public. Around this realization — protection to the public — has recently 
grown up the whole doctrine of prevention of unfair competition. 
Legislation therefor, though it goes only to the limited extent of 
declarator}^ registration, is, in the long run, legislation to protect, by 
designated regulation, the public, as well as the producer, in touch 
with foreign or interstate commerce. 

The foreign laws, of which a summary of the chief characteristics 
has been given, have been made use of in framing the proposed bill 
with which we accompany this report. We have stated in the lyropo- 
sition for a law our conclusions as to the possible extent of such a law, 
but do not wish to be understood as expressing any opinion as to the 
expediency of the proposed act. 

We ask the opportunity of here thanking the learned and experi- 
enced gentlemen who, with patriotic motives, appeared before us and 
gave us the result of their experience, and also those who expressed 



REPORT OF COMMISSION TRADEMARKS. 61 

their opinions in writing. We have appended to this report copies of 
the treaties, conventions, agreements, and declarations referred to in 
the report; also the reports of delegates from the United States under 
the Convention of Paris, 1883, to the several conferences thereunder 
and various matters historically connected with that Convention, the 
legislation of certain countries on the subject of industrial property, 
certain conventions between foreign nations, also extracts from the 
Congressional Globe and Record presenting the debates in Congress 
on the subject of trademarks. We believe that these various papers 
will greatly aid the Congress in arriving at a right conclusion on the 
recommendations made by us. 
Respectfully submitted. 

Francis Forbes. 

Peter Stenger Grosscup. 

I concur fully in the above report and recommendations, so far as 
they relate to changes in the patent law, and in the proposed bills in 
which such recommendations are embodied. So far as the portion of 
the report relating to trade and other marks is concerned, while I con- 
cur fully as to the extent of the constitutional authority of Congress 
to provide for the registration and protection of trademarks used in 
commerce among the several States, as well as those used in commerce 
with foreign nations, and as to the necessity for so amending the 
present law as to give full force and effect to the provisions of the 
International Convention and other treaties, to secure the general regis- 
tration of all marks used in interstate or foreign commerce by re- 
ducing the fee for registration, by making more simple the procedure 
neccessary to secure registration, and by giving to registered marks 
advantages not given to unregistered marks, and while I believe the 
proposed bill may be enacted into law by Congress without exceeding 
the authority conferred by the commerce clause of the Constitution, I 
can not join in presenting a proposed bill which seems to abrogate the 
common -law rights now enjo^^ed by owners of trademarks and carries 
the regulation of interstate commerce to such an extent as the bill 
proposed by my colleagues. 

In my opinion the legislation called for by the needs of our grow- 
ing commerce, both interstate and foreign, is in the direction of 
affording fuller protection to the rights acquired under the common 
law rather than in the direction of changing the mode of acquiring the 
right to the exclusive use of a mark. In accordance with this opinion 
I submit a draft of a proposed bill to revise the laws relating to trade- 
marks, which, without abrogating in any respect the common-law 
rights of the owners of trademarks, satisfies, in my opinion, the pres- 
sent needs of our trademark interests.^ 

In order to make my position in this matter clear I submit, in con- 
nection with my proposed trademark bill, a review of the history of 
trademarks and trademark legislation in the United States, for the 
purpose of indicating the origin, development, and extent of the pro- 
tection to trademarks afforded by the common law, as I understand it.* 

Respectfully submitted. 

Arthur P. Greeley. 

1 See page 126. 
^Seepage 89. 



PROPOSITION FOR THE REGULATION BY THE CONGRESS OF THE 
UNITED STATES OF THE USE OF MARKS IN COMMERCE. 



It seems desirable at the present time that all marks which have 
more than a local use should be regulated by a single law applicable 
to the entire territory of the United States. 

Such a law should so state the intent of Congress that no question 
may arise as to its power to make the law. 

It should apply to all marks used in commerce extending beyond the 
boundaries of a single State, whether marks of an agriculturist, a manu- 
facturer, a merchant, a community, a union of persons, or a common 
carrier, and whether obligatory or optional. 

It should provide for registration and notice thereof, in order — 

That the law may not be unwittingly violated ; 

That treaty obligations may be fulfilled; and 

That home registration by our citizens, when a prerequisite to foreign 
registration, may be secured. 

It should make such registration easy and cheap, e. g., as copyright 
now is; and for that purpose should provide statutory forms as in 
copyright. 

It should reward registration under it. 

It should provide means — 

For cancelling registration; 

For repressing and punishing any unlawful use of marks and award- 
ing damages to parties injured thereby; 

For repressing deceptive marks on foods and medicines; 

For repressing marks falsely indicating inspection wherever inspec- 
tion is required; and 

For excluding from the United States goods, bearing misleading 
marks, or not marked as required by law. 

The chief points of difference hetween the provisions of this hill cmd 
those of the present trademark act of 1881 are these : 

The present bill proposes to cover the regulation of commerce with 
foreign nations, and among the several States and with the Indian 
tribes, and in the territory of the United States not included within 
the several States, in so far as concerns marks affixed to objects of 
commerce for identification or for information, whether optional or 
obligatory. The act of 1881 relates only to the very limited class of 
trademarks which are used in foreign commerce or in commerce with 
the Indian tribes. 

The present bill provides — 

For a simple form of application for registration, waiving no rights, 
instead of the complicated description required under the act of 1881, 
and the limitation to an essential feature required by the rules; 

For a short period of registration of ten years instead of the long 
period of thirty years, under the act of 1881 ; 

For a small fee for registration in place of the large one now exacted. 

It more clearly states what marks shall be refused registration and 

63 



64 



REVISION OF STATUTES EELATING TO PATENTS, ETC. 



leaves the determination of questions as to the character of a mark to 
the courts of the United States for determination after a hearing. 

Thejpresent hill provides^ in addition to the provisions of the act of 
1881— 

For opposition to registration by interested parties; 

For cancellation of registration at the instance of an injured 
party; 

For notice of registration attached to the mark; 

For legal redress for the wrongful use of registered marks in 
interstate and territorial commerce. 

For punishment as a misdemeanor of the unlawful use or imitation 
of a registered mark; 

For seizure in transit of goods bearing simulated registered marks, 
etc. ; 

For seizure of foods and medicines bearing deceptive marks, or false 
marks of inspection, also for their exclusion from the United States. 

It includes obligatory marks heretofore made part of tariff acts, of 
inspection laws, etc. 



AREANGEMENT OP BILL. 



Sectioiio 

Title stating object of bill. 

1. Short title by which act shall be 

known, 

2. Object of act. 

3. Country of origin and quantity to be 

marked. 

4. Foods and medicines bearing decep- 

tive marks or false marks of inspec- 
tion. 

5. Persons entitled to exclusive use of 

mark — Liability for misuse. 

6. Registration of certain marks permit- 

ted — Of what denied. 

7. Form of application for registration — 

Form of affidavit to accompany the 
same — Drawing ^Register of ad- 
dresses of nonresidents. 

8. Priority under conventions. 
Examination of application — Publica- 
tion of mark — Form of certificate of 
registration — Date of certificate — 
Duration of registration — Certifi- 
cate may issue to assignee. 

Notice of refusal of registration. 

Notice to interested parties — Opposi- 
tion to registration. 

Interference or opposition — Proce- 
dure. 

Cancellation of registration. 

Appeal from examiner of trademarks 
to Commissioner. 

Appeal from Commissioner to court 
of appeals of District of Columbia. 

Notice of appeal. 

17. Proceedings upon appeal, 

18. Determination of appeal and its effects. 
Appeal from court of appeals of Dis- 
trict of Columbia to the Supreme 
Court of the United States. 

Registration obtainable by bill in 
equity. 



9. 



10. 
11. 

12. 

13. 
14. 

15. 

16. 



19 



20 



Section. 

21. Renewal of reigistration. 

New application for registration of 
mark already registered. 

Fraudulent registration — Damages. 

Transfer of trademarks. 

Registered trademarks must be 
marked as such. 

Penalty for falsely marking an un- 
registered mark. 

Actions for infringement — Damages. 

Pleadings and proofs in such actions. 

Power of court to grant injunction 
and assess damages — To impanel 
jury. 

Application for registration equiva- 
lent to use. 

31. Offenses against trademarks. 

32. Seizure of articles bearing an imitation 

of a registered trademark or of a 
commercial name. 

Articles bearing imitations of a regis- 
tered trade-mark or of a commer- 
cial name forbidden entry. 

Fees, Costs. 

Saving clause. 

Construction of terms— Territory- 
Person — Number — Gender — Ap- 
plicant — Registrant — Infringe- 
ment — Imitation — Affixed — 
Knowingly — Country of origin. 

Construction of act. 

Pending applications. 

Registrations heretofore made — Act 
of 1870— Act of 1881. 

Registration by residents of Hawaii. 

International registration of trade- 
marks. 

42. Amendatory and repealing statutes. 

43. Repeal. 

44. When act to take effect. 



22. 

23. 

24. 
25. 

26. 

27. 
28. 
29. 



30 



33 



34. 
35. 
36. 



37. 

38. 
39. 

40. 
41. 



BILL PROPOSED TRADEMARKS. 65 

A BILL to regulate and protect marks, trade-marks, commercial names, and sjonbols 
used in commerce, and to enforce treaties regarding the same. 

Be it enacted hy the Senate and Iloicse of Representatives of the 
United States of America in Congress assemhled^ 

SHORT TITLE. 

Sec. 1. This Act shall be known as the trade-marks Act. 

OBJECT OF ACT. 

Sec. 2. All marks, trade-marks, commercial names and symbols 
used in commerce with foreign nations or among the several States or 
with the Indian tribes or in the territory of the United States shall be 
used and their use protected in the manner herein prescribed. 

COUNTRY OF ORIGIN AND QUANTITY TO BE MARKED. 

Sec. 3. All articles manufactured in foreign countries, upon impor- 
tation into the United States, shall be plainh^ marked in legible Eng- 
lish words, in a conspicuous place, with the name of the country of 
their origin, or, when from the character or size of the articles this 
can not be done, the package in which one or more of such articles are 
inclosed shall be marked in the same manner with the name of the 
countr}" of their origin together with a plain statement of the quantity 
of the contents of such package; in default of which the same shall not 
be admitted to entiy at an\^ custom-house of the United States. 

The Secretary of the Treasury may make rules permitting the mark- 
ing of such articles and packages and the amendment of the statement 
of quantit}^, and such prohibition of entry shall, when such rules are 
complied with, be removed. 

FOODS AND medicines BEARING DECEPTIVE MARKS OR FALSE IVIARKS 

OF INSPECTION. 

Sec. 4. Any article commonly used as a food or a medicine, to which 
is affixed 

1. A mark likely to deceive the consumer as to the place of its 

origin or as to its composition, or 

2. A mark falsely indicating inspection under the laws of the 

United States or of any foreign government 
shall be refused entry at eveiy custom house of the United States, and 
may be seized by the marshal of the proper district under written 
authority of the district attorney of any district of the United States 
in which the same or a part thereof ma}^ be found, in transit to or from 
a foreign nation, or Indian tribe, or among the several States, or over 
the territory of the United States, but not in transit in bond. An}^ 
person ma}^ file information with the district attorney of the proper 
district, in which case the proceedings shall be for the joint benefit of 
such informer and of the United States, in equal parts. 

The district attorney b}" whose authority the seizure was made shall 
forthwith institute proceedings in rem in the name of the United States, 
in the district court of the district, or in the territorial court of the 
Territory, or in the Supreme Court of the District of Columbia, 
within which the said property or any part thereof may be found, for 
the condemnation and sale of the property seized, which proceedings 



66 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

shall conform as nearly as ma}'^ be to proceedings in admiralty or rev- 
enue cases. And if it shall be found that the provisions of this section 
have been violated in respect to the said propert}^ the same shall be 
condemned and sold or destroyed as the court may decree, and the pro- 
ceeds thereof, if sold, paid to the Treasurer of the United States to the 
use of the United States, or one-half to such Treasurer and the other 
half to the person filing an information therein, as hereinbefore 
provided. 

PERSONS ENTITLED TO EXCLUSIVE USE OF MARK— LIABILITY FOR 

MISUSE. 

Sec. 5. A citizen of the United States, or a person residing therein, 
a member of an Indian tribe, or a citizen or subject of a government 
which by treaty or convention aifords similar privileges to citizens of 
the United States, or a person who has a bona fide industrial or com- 
mercial establishment in the territory of such government, may adopt 
for his use in commerce with foreign nations or among the several 
States or with the Indian tribes or in the territory of the United States 
a mark to distinguish his produce, his manufacture, or his merchan- 
dise or the merchandise over which he has control as a common carrier 
or in the production of which he has taken part and shall be entitled 
to the exclusive use of such mark in such commerce on complying 
with this Act. Another person making use of the same in such corn- 
commerce shall be liable therefor as hereinafter provided. 

REGISTRATION OF CERTAIN MARKS PERMITTED — OF WHAT DENIED. 

Sec. 6. A person mentioned in the last section may apply for the 
registration of a mark adopted by him for use as hereinbefore pro- 
vided, and the same may be registered on the payment into the Treas- 
ury of the United States of the fees prescribed in this Act, 

(a) Provided, that there shall not be registered, except as herein 

otherwise specified: 

1. Public arms or decorations, including the national flag. 

2. A word or words denoting the nature or quality of the goods, 

or a geographical name or names, unless the applicant 
states in his application that he makes no claim of 
exclusive right to the use of those words or names. 

3. The name of a person, unless such name be in a distinctive 

shape, or consist of the written signature in original or 
facsimile of the person who makes the application: 

4. A mark contrary to good morals. 

(b) Provided further, that at the time of making such application 

no other person entitled to register said mark shall have pre- 
viously used the same on the same class of goods in commerce 
with foreign nations, or among the several States, or with the 
Indian tribes, or in the territory of the United States, and the 
same shall not have been abandoned; except, however, that 
whenever it shall appear that an applicant for registration or 
a registrant, at the time of making the application for regis- 
tration, believed himself to be the first to adopt and use the 
mark on the same class of merchandise, registration shall not 
be refused, nor shall said mark or the registration thereof be 
held invalid because of its use in a foreign country or within 
a single State without registration. 



BILL PEOPOSED TRADEMARKS. 67 

(c) Provided further, that every trade-mark duly registered in a 

country with which the United States has by treaty or con- 
vention provided for the reciprocal registration of trade 
marks shall be entitled to registration pursuant to the terms 
of such treaty or convention. But no citizen or subject of 
a foreign government or person who has a bona fide indus- 
trial or commercial establishment in the territory of such 
government, and not residing in the United States, other- 
wise entitled to register a mark under this Act, shall be 
entitled to such registration until the mark sought to be 
registered shall have been registered by such foreign gov- 
ernment as a trade-mark valid within its jurisdiction. 

(d) Provided further, that nothing in this Act shall afi^ect the 

right of a person resident in a State to the use of a mark 
used solely within the boundaries of such State. 

FORM OF APPLICATION FOE REGISTRATION. 

Sec. 7. Before a mark shall be registered application therefor must 
be made to the Commissioner of Patents in the following form in 
duplicate. 
To the Commissioner of Patents of the United States of America: 

T (we), , apply for the registration as of (date) , of 

the annexed mark as a trade-mark, and state as follows : The principal 
place of business of applicant (s) is , and applicant (s) has (have) 

a bona fide industrial (or commercial) establishment in . Appli- 

cant(s) is (are) resident(s) of , and a citizen(s) of : is 

incorporated and exists under the laws of 

Applicant(s), when not residing in the United States, authorize(s) 
service of all papers or process relating to said mark and provided by 
this Act on the Secretary of the Treasury of the United States with 
the same force and effect as if served personally. 

The mark is used (or, is intended to be used) in commerce with 
foreign nations or amgng the several States, or with the Indian tribes 
or in the territory of the United States, on the following class of 
goods: . (If applicant is not a resident of the United States 

he must state his foreign registration as follows:) The mark is regis- 
tered as a trade-mark in , under the number , for the 
period of , for the following class of goods: . (If a 
date of registration prior to date of filing is desired, applicant must 
state:) The date of first application in any foreign country is 
; application filed in .The registration of said 
trade-mark in (name country of origin) is now in full force, 
but may expire or become void because of the following (insert 
causes for which it may expire or become void) : 

The following is a copy of the mark for which registration is 
, sought: 



Marks to be 
inserted. 



Date (place, day, month, and year) 



68 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

The application must be signed by the applicant or applicants, who 
shall annex thereto his or their oath in the following form: 

FORM OF AFFIDAVIT. 

(Place where oath is made), ss. 

, being duly (severally) sworn (aflarmed) says (say): 

1 am (we are) (or, if the applicant is a corporation, the president, 
secretary, or director of) the applicant (s) named in the annexed appli- 
cation; so far as I (we) know and am (are) informed, and to the best of 
my (our) belief, the applicant (s) or his (their) predecessor (s) in the 
business was (were) the first to adopt and use or adopt the mark shown 
in such application to distinguish his (their) produce, his (their) manu- 
facture, or his (their) merchandise, and the same does not so nearly 
resemble a mark previously adopted and used or adopted by a person, 
firm, or corporation other than applicant (s) as to be likely to cause 
confusion or mistake in the minds of the public or to deceive pur- 
chasers. The said mark has been used (or is intended to be used) in 
commerce with foreign nations, or among the several States, or with 
the Indian tribes, or in the territory of the United States, and the 
statements made in the annexed applicatian are true. 

Subscribed and sworn to (or affirmed) before me this day of 

The oath may be made before any person within the United States 
authorized by law to administer oaths, or without the United States 
before any minister, charge d'affaires, consul, or commercial agent, 
holding commission under the Government of the United States, or 
before any notary public, judge, or magistrate having an official seal 
and authorized to administer oaths in the foreign country in which the 
applicant may be. 

DRAWING. 

The applicant shall file in addition thereto a drawing of said mark, 
or a facsimile thereof, or a block for printing the same, one or all, as 
shall be prescribed by the Commissioner of Patents. 

REGISTER OF ADDRESSES OF NONRESIDENTS — NOTICE TO THEM. 

The applicant, if not a resident of the United States, shall file with 
the Secretary of the Treasury his name and address for service under 
such rules as may be made by such Secretary establishing fees and 
regulations for such filing and the service connected therewith. 

The Secretary of the Treasury shall keep a register of names and 
addresses so filed with him, and shall forthwith forward by mail to 
each applicant, at his last registered address, every paper or process 
served upon him in lieu of personal service upon such applicant pur- 
suant to this Act. 

PRIORITY UNDER CONVENTIONS. 

Sec. 8. A person entitled to the registration of a trade-mark under 
this Act who has applied for the registration of a trade- mark in an}^ 
foreign country which by treaty or convention affords similar privileges 
to citizens of the United States, may file the application prescribed in 



BILL PROPOSED TRADEMARKS. 69 

the last section in the Patent Office of the United States as of the aate of 
filing of his first application in such a foreign country, if four months 
shall not yet have expired, and such filing shall have the same force 
and effect as though made on said date. Proof of such filing may be 
made by a certified copy thereof, or in such other manner as may be 
required by the Commissioner of Patents. 

EXAMINATION OF APPLICATION — PUBLICATION OF MARK. 

Sec. 9. On the filing of such application and the pa3^ment of the 
fees required by law, the Commissioner of Patents shall cause the 
application to be examined by the examiner in charge of trade-marks. 
If it appear on such examination — 

(a) That the applicant is one of the persons mentioned in section 

five of this Act; and 

(b) That the mark is entitled to registration as herein provided; 

and 
If no notice of opposition to its registration be filed as herein 

provided, 
the Commissioner shall cause the mark to be published in the Official 
Gazette of the Patent Office. 

At the expiration of thirty days from such publication, unless notice 
of opposition shall previousl}^ have been given as herein provided, the 
Commissioner shall register the mark as a trade-mark and issue a cer- 
tificate thereof in the following form, to which shall be attached one 
of the duplicate copies of the application filed in the Patent Office: 

FORM OF CERTIFICATE OF REGISTRATION. 

The United States of America. 
To all to whom these presents shall come: 

This is to certify that on the day of , , 

made application for the registration of the annexed trade-mark in the 
form annexed, and that the same has been registered for for the 

term of years, unless sooner terminated by provision of law. 

In testimony whereof the seal of the Department of the Interior is 
hereto affixed this day of , , and of the inde- 

pendence of the United States the 

Given under my hand at Washington, District of Columbia. 



Commissioner of Patents. 



DATE OF CERTIFICATE. 



Each certificate shall bear date as of the day on which the applica- 
tion was filed, or as of the day when the first application was filed in 
a foreign country if within four months prior to such filing in the 
United States. 



DURATION OF REGISTRATION. 



The trade-mark shall be registered for the term of ten years, unless 
the applicant is a nonresident alien entitled to registration under this 
Act, in which case the trade-mark shall be registered for the same 
term as in the country of origin if such term be less than ten years. 



70 EEVISION OF STATUTES EELATING TO PATENTS, ETC. 



The registration of a trade-mark of a nonresident alien shall immedi- 
ately expire in case such registered trade-mark shall be declared invalid 
or the registration shall expire or become void in the country of origin. 

CERTIFICATE MAY ISSUE TO ASSIGNEE. 

Certificate of registration may be granted to the assignee of the 
applicant if otherwise entitled to register the mark; but the assign- 
ment must first be entered of record in the Patent Office, and shall 
remain on file therein. 

NOTICE OF REFUSAL OF REGISTRATION. 

Sec. 10. In case of refusal of the application for registration the 
Commissioner of Patents shall notify the applicant thereof, giving 
him, briefly, the reasons for such refusal. 

NOTICE TO INTERESTED PARTIES — OPPOSITION TO REGISTRATION. 

Sec. 11. If it appear on the examination directed in section nine 
that a person other than the applicant, prior to such application — 

1. Has registered and is still entitled to the right of a registrant 

in a mark; or 

2. Has pending an application for registration of a mark; or 

3. Has previously used in commerce with foreign nations, among 

the several States, or with the Indian tribes, or in the ter- 
ritory of the United States, a mark 
to which, in the opinion of the examiner in charge of trade-marks, the 
mark for registration of which application is made has so near a resem- 
blance as to be likely to cause confusion or mistake in the mind of the 
public or to deceive purchasers, the Commissioner shall give notice 
thereof before publication of the mark to the prior applicant, regis- 
trant, or user, who may file in the Patent Office notice of opposition, 
stating the grounds therefor, within thirty days, or in the case of a per- 
son whose name and address is registered with the Secretary of the 
Treasury, forty days thereafter, in default of which publication shall 
be made. 

A person who would be injured by the registration of a mark may 
oppose the same by filing notice of opposition, stating the grounds 
therefor, in the Patent Office within thirty days after the publication 
of the mark sought to be registered. 

INTERFERENCE OR OPPOSITION — PROCEDURE. 

Sec. 12. In all cases where notice of opposition has been filed, the 
Commissioner of Patents shall notify the applicant thereof and of the 
grounds therefor. The Commissioner shall, in ever}^ case of inter- 
ference between pending applications when demanded by either appli- 
cant, or of opposition to registration, direct the examiner in charge of 
trade-marks to proceed to determine the question of priority between 
applicants or of the sufficiency of objections to registration, in such 
manner and upon such notice to those interested as he may by rules 
prescribe. The Commissioner may refuse to register the mark against 
the registration of which objection is filed, or may refuse to register 
both of two interfering marks, or may register the mark as a trade- 



BILL PROPOSED TRADEMARKS. 7l 

mark for the person first to adopt and use the mark if otherwise enti- 
tled to register the same, unless an appeal is taken from the decision 
by a party interested in the proceedings within such time, not less 
than tw^ent}- days, as the Commissioner may prescribe. 

CANCELLATION OF REGISTRATION. 

Sec. 13. Whenever a person enumerated in section five of this Act 
shall deem himself injured by the registration of a trade-mark in the 
Patent Office he may appl}^ to the Commissioner of Patents to can- 
cel the registration of such trade-mark. The Commissioner shall 
refer such application to the examiner in charge of trade-marks and 
give notice thereof to the registrant. If it appear after a hearing 
before the examiner, that the trade-mark is not used by the registrant 
or has been abandoned or was not entitled to registration, and if the 
examiner shall so decide and no appeal be taken from his decision, the 
Commissioner shall cancel the registration. 

APPEAL FROM EXAMINER OF TRADE-MARKS TO COMMISSIONER. 

Sec. 14. Every applicant for the registration of a mark as a trade- 
mark, every registrant, every part}^ to any interference, and every per- 
son who has filed notice of opposition or has applied to the Commis- 
sioner for the cancellation of the registration of a trade-mark, may 
appeal from the decision of the examiner in charge of trade-marks to 
the Commissioner in person on payment of the fee prescribed herein 
and upon compliance with such rules as may be made by the Com- 
missioner. 

APPEAL FROM COMMISSIONER TO COURT OF APPEALS, DISTRICT OF 

COLUMBIA. 

Sec 15. If such party be dissatisfied with the decision of the Com- 
missioner of Patents, he may appeal to the court of appeals of the 
District of Columbia. 

NOTICE OF APPEAL. 

Sec. 16. When an appeal is taken to the court of appeals of the 
District of Columbia from the decision of the Commissioner of 
Patents, the appellant shall give notice thereof to the Commissioner 
and file in the Patent Office, within such time as the Commissioner 
shall appoint, his reasons of appeal specificall}^ set forth in writing. 

PROCEEDINGS UPON APPEAL. 

Sec. it. The court shall, before hearing such appeal, give notice to 
the Commissioner of Patents of the time and place of the hearing, and 
on receiving such notice the Commissioner shall give notice of such 
time and place in such manner as the court may prescribe, to all parties 
who appear to be interested therein. The party appealing shall lay 
before the court certified copies of all the original papers and evidence 
in the case, and the Commissioner shall furnish the court with the 
grounds of his decision, fulh^ set forth in writing, touching all the 
points involved by the reasons of appeal. 
S. Doc. 20 6* 



72 EEVISION OF STATUTES RELATING TO PATENTS, ETC. 



DETERMINATION OF APPEAL AND ITS EFFECTS. 

Sec. 18. The court, on petition, shall hear and determine such appeal 
and revise the decision appealed from in a summary way, on the evi- 
dence produced before the Commissioner, at such early convenient time 
as the court may appoint; and the revision shall be confined to the 
points set forth in the reasons of appeal. After hearing the case the 
court shall return to the Commissioner a certificate of its proceedings 
and decision, which shall be entered of record in the Patent Office, and 
shall, unless reversed or modified as hereinafter provided, govern the 
further proceedings in the case. But no opinion or decision of the 
court in any such case shall preclude any person interested from the 
right to contest the validity of the registration or of the trade- mark in 
any court wherein the same may be called in question. 

APPEAL FROM THE COURT OF APPEALS OF THE DISTRICT OF COLUMBIA 
TO THE SUPREME COURT. 

Sec. 19. A party to the proceeding who shall deem himself 
aggrieved b}^ the decision of the court of appeals of the District of 
Columbia may appeal from such decision to the Supreme Court of the 
United States. The court, upon petition, shall hear and determine 
such appeal and may reexamine and affirm, reverse, or modify the 
decision of the court of appeals of the District of Columbia. The pro- 
ceedings upon appeal shall be governed by such rules as the higher 
court ma}^ prescribe. The provisions hereinbefore contained touching 
the certificate to be returned by the court of appeals of the District of 
Columbia to the Commissioner, and the recording of the same in the 
Patent Office, shall apply with like force and effect to the Supreme 
Court. 

REGISTRATION OBTAINABLE BY BILL IN EQUITY. 

Sec. 20. Whenever registration on application is refused, either by 
the Commissioner of Patents or by the court of appeals of the District 
of Columbia upon appeal from the Commissioner, the applicant may 
have remed}^ by bill in equity, and the court having cognizance thereof, 
on notice to adverse parties and other due proceedings had, may 
adj udge that such applicant is entitled according to law to registration 
of the mark for which he has applied. If such adjudication be in favor 
of the applicant, the Commissioner shall register the mark as a trade- 
mark, upon the applicant filing in the Patent Office a copy of the adju- 
dication and otherwise complying with the requirements of law. In 
all cases where there is no opposing party, a copy of the bill shall be 
served on the Commissioner, and all the expenses of the proceedings 
shall be paid by the applicant, whether the final decision be in his favor 
or not. 

RENEWAL OF REGISTRATION. 

Sec. 21. At any time within three months before the expiration of 
the registration of a trade-mark, the Commissioner of Patents shall 
register the same anew and issue a certificate thereof upon application 



BILL PROPOSED TRADEMA.RKS. 73 

in the form prescribed in section seven, and such registration shall be 
noticed in the Official Gazette of the Patent Office: 
Provided as follows: 

1. The applicant shall pay to the Commissioner of Patents the 

fees prescribed in this Act. 

2. The applicant, at the time of the application for the renewal of 

registration, fulfils the conditions required as to the appli- 
cant and the trade-mark, on an original registration under 
this Act. 

3. The trade-mark has not fallen into the public domain in the 

country of origin. 

NEW APPLICATION FOR REGISTRATION OF MARK ALREADY REGISTERED. 

Sec. 22. Whenever a registration is defective or inoperative or 
invalid for any reason, the party in interest may, on the surrender of 
the original certificate, appl}^ anew, in the same form or in an amended 
form, for the registration of the alleged trade-mark, in which case the 
same proceedings shall be had as on an original application for regis- 
tration, but a new certificate of registration shall be issued only for 
the unexpired part of the original term of registration. Such new 
registration shall take effect upon the issue of the new certificate. 

FRAUDULENT REGISTRATION — DAMAGES. 

Sec. 23. A person who shall procure the registration of a mark, the 
record of an assignment thereof or of an entry respecting a mark in 
the office of the Commissioner of Patents by a false or fraudulent rep- 
resentation or declaration, orally or in writing, or b}^ any fraudulent 
means, shall be liable to pay to the injured party the damages sus- 
tained in consequence thereof, to be recovered in an action on the case 
in a circuit court of the United States. 

TRANSFER OF TRADE-MARK. 

Sec. 24. Every registered trade-mark and ever}^ mark for the reg- 
istration of which application has been made, together with the appli- 
cation for registration of the same, shall be assignable in connection 
with the good will of the business in which the mark is used. Such 
assignment must be by instrument in writing, which shall be filed in 
the Patent Office within three months after it shall take effect by 
delivery or otherwise, and a notice thereof shall be published in the 
Official Gazette. In default of such filing, the application or registra- 
tion shall lapse at the end of three months after the assignment shall 
take effect. Such assignment may be made in a proper case by a 
trustee in bankruptcy or by an officer of a court of the United States 
or of a State having jurisdiction over the person of the registrant, 
provided always that the good will of the business in which the trade- 
mark is used is included in such assignment. 

If any such assignment shall be acknowledged before any notary 
public of the several States or Territories or of the District of Colum- 
bia, or any commissioner of the United States circuit court, or before 
any secretary of legation or consular officer authorized to administer 
oaths or perform notarial acts under section seventeen hundred and fifty 



74 EEVISION OF STATUTES RELATING TO PATENTS, ETC. 

of the Revised Statutes, the certificate of such acknowledgment, under 
the hand and official seal of such notar}^ or other officer, shall be prima 
facie evidence of the execution of such assignment. 

REGISTERED TRADE-MARKS MUST BE MARKED AS SUCH. 

Sec. 25. It shall be the duty of the registrant to give notice to the 
public that the trade-mark is registered, either b}^ affixing thereon the 
words "Registered in the United States," together with the da}^ and 
year the certificate of registration was granted, at length, or abbrevi- 
ated thus: ''Reg. U. S. 1, 2, 99," with the day, month, or year 
indicated by numerals; or when, from the character or size of the 
trade-mark, or from its manner of attachment to the article to which 
it belongs, this can not be done, then by affixing a label, containing 
the like notice, to the package wherein are inclosed one or more of the 
articles to which the trade-mark is attached; and in any suit for 
infringement by a party failing so to give notice of registration, no 
damages shall be recovered by the plaintiff except on proof that the 
defendant was duly notified of the infringement, and continued the 
same after such notice. 

PENALTY FOR FALSELY MARKING AN UNREGISTERED MARK. 

Sec. 26. Every person who, for the purpose of deceiving the pub- 
lic, in any manner marks upon or affixes to any unregistered mark, or 
upon the package containing articles to which unregistered marks are 
affixed, the words "Registered in the United States," or any words 
importing that the same is registered in the United States, shall be 
liable for every such offense to a penalty of not less than one hundred 
dollars, with costs; one-half of said penalty to the person who shall 
sue for the same, and the other half to the use of the United States, to 
be recovered by any person by suit in a circuit court of the United 
States within whose jurisdiction such offense may have been committed. 

ACTIONS FOR INFRINGEMENT — DAMAGES. 

Sec. 27. Damages for the infringement of an}^ registered trade-mark 
may be recovered by action on the case in a circuit court of the United 
States in the name of the party interested, whether as registrant or 
assignee. And whenever in any such action a verdict is rendered for 
the plaintiff, the court may enter judgment thereon for any sum above 
the amount found by the verdict as the actual damage sustained, accord- 
ing to the circumstances of the case, not exceeding three times the 
amount of such verdict, together with the costs. 

pleadings and proofs in such action. 

Sec. 28. In an}^ action for infringement of a registered trade-mark, 
the defendant may plead the general issue, and having given notice in 
writing to the plaintiff" or his attorney thirty days before, maj^ prove 
on the trial any one or more of the following special matters: 

1. That the registered trade-mark was not properly registrable 
under this act; or 



BILL PROPOSED TRADEMABKS. 75 

2. That, for the purpose of deceiving the public, the application 

for registration, or the oath annexed thereto, or the draw- 
ing* filed therewith contained a false statement; or 

3. That the registered trade-mark is used in an unlawful business 

or upon an article injurious in itself; or 

4. That the registered trade-mark is used with design to deceive 

the public in the purchase of merchandise; or 

5. That the registration has expired because the registration of the 

same mark in the country of origin has expired or become void. 
And in notices as to proof of want of registrability or of false state- 
ment, the defendant shall state the names and residences of the persons 
alleged to have knowledge of the facts showing that the trade-mark 
was not properly registrable or of the falsity of the statement; and 
if any one of the special matters alleged shall be found for the defend- 
ant, judgment shall be I'enlered for him, with costs; and the like 
defenses may be pleaded in any suit in equity for relief against an 
alleged infringement; and proofs of the same may be given upon like 
notice in the answer of the defendant, with the like efi'ect. 

POWER OF COURTS TO GRANT INJUNCTIONS AND ASSESS DAMAGES — TO 

IMPANEL JURY. 

Sec. 29. The several circuit courts of the United States shall 
have power to grant injunctions according to the course and princi- 
ples of courts of equity, on such terms as the court ma}^ deem reason- 
able, to prevent the use by another than the registrant or his assignee 
of a registered trade-mark in commerce with foreign nations or among 
the several States or with the Indian tribes, or in the territory of the 
United States, or the violation of any right under any such registered 
trade-mark; and upon a decree being rendered in any such case against 
the defendant, the complainant shall be entitled to recover, in addition 
to the profits to be accounted for by the defendant, the damages the 
complainant has sustained b}^ reason of the acts of the defendant; and 
the court shall assess the same or cause the same to be assessed under 
its direction. 

The court shall have the same power to increase such damages, in 
its discretion, as is given by section twenty-seven of this Act. But, in 
any suit or action brought for the infringement of any registered 
trade-mark, there shall be no recovery of profits or damages for any 
infringement committed more than six years before the filing of the 
bill of complaint or the issuing of the writ in such suit or action. 

The said court, when sitting in equity for the trial of such causes, 
may impanel a jury of not less than five and not more than twelve per- 
sons, subject to such general rules in the premises, as may, from time 
to time, be made by the Supreme Court, and submit to them such 
questions of fact arising in such cause as such circuit court shall deem 
expedient. And the verdict of such jury shall be treated and proceeded 
upon in the same manner and with the same efi'ect as in the case of 
issues sent from chancery to a court of law and returned with findings 
of fact. 

application for registration equiyalent to use. 

Sec. 30. Application for the registration of a mark referred to in 
section five of this Act shall be deemed to be equivalent to the public 
use of the mark. 



76 REVISION OF STATUTES RELATING TO PATENTS, ETC. 



OFFENSES AGAINST TRADE-MARKS. 

Sec. 31. A person who knowing!}^, for use in commerce with foreign 
nations, or among the several States, or with the Indian tribes, or in 
the territory of the United States — 

i. Falsely makes or counterfeits a registered trade-mark; or 

2. Affixes to any article of merchandise a false or counterfeit reg- 

istered trade-mark, knowing the same to be false or counter- 
feit, or the genuine registered trade-mark or an imitation 
of the registered trade-mark of another, without the latter's 
consent; or 

3. Sells or keeps or offers for sale an article of merchandise to 

which is affixed a false or counterfeit registered trade-mark, 
or the genuine registered trade-mark or an imitation of 
the registered trade-mark of another, without the latter's 
consent; or 

4. Has in his possession a counterfeit registered trade-mark, know- 

ing it to be counterfeit, or a die, plate, brand or other thing 
for the purpose of falsely making or counterfeiting a reg- 
istered trade-mark; or 

5. Makes or sells, or offers^ to sell or dispose of, or has in his 

possession with intent to sell or dispose of, an article of 
merchandise with such a mark as to appear to indicate the 
quantity, quality, character, place of manufacture or pro- 
duction, or persons manufacturing or producing the articles, 
or inspection under the laws of the United States or of 
any foreign government, but not indicating it truly, shall 
be deemed guilty of a misdemeanor, and on conviction 
thereof shall be punished by a fine of not more than five 
hundred dollars and by deprivation of all benefits and priv- 
ileges under this Act. 

seizure OF ARTICLES BEARING AN IMITATION OF A REGISTERED TRADE - 
IVIARK OR OF A COMMERCIAL NAME. 

Sec. 32. An article of merchandise to which is affixed an imitation 
of a registered trade-mark or of a commercial name, or a false or 
counterfeit registered trade-mark, may be seized in transit to or from 
a foreign nation or Indian tribe, or among the several States, or over 
the territory of the United States, but not in transit in bond. 

Any circuit court of the United States may, upon petition duly ver- 
ified by a party injured setting forth the facts and upon proper secu- 
rit}^ given, direct the seizure of such merchandise b}^ any marshal of 
the United States. The marshal making such seizure shall forthwith 
serve upon the owner of such merchandise a copy of such order and 
of the petition upon which the order was granted, by delivering the 
same to him personally if he can be found with due diligence, or if he 
can not be found, then to his agent, if any, from whose possession the 
said goods were taken, and if neither can be found, then by posting 
the same in a conspicuous place in or upon the building, vessel, car, 
or other structure or means of transportation from which the said 
merchandise was removed, and in either of the last two cases by 
mailing a copy thereof to the owner at his last known address. 



BILL PEOPOSED — TRADEMARKS. 77 

Within ten days thereafter the owner of the said merchandise may 
apply upon affidavits to the court by which the order was granted for 
an order to show cause why the original order should not be vacated. 
Upon the return of such order to show cause the court shall determine 
whether the facts exist justifying the seizure. If it shall be found 
that these facts do not exist the court shall vacate the original order 
and direct the restoration of the merchandise. If it appear that the 
facts exist justifying the seizure, or if no application for the restora- 
tion of the merchandise be made as herein provided, the court shall 
direct that the same be sold at public auction, after removal of the 
imitation mark and due advertisement; and the proceeds of such sale, 
after deducting the expenses of seizure and sale and the fees of the 
marshal therefor, shall be paid one-half to the Treasurer of the United 
States and the other half to the party injured. 

In an}^ action to recover damages for wrongful seizure or sale under 
this section the sureties upon the bond of the petitioner may be made 
parties defendant, and judgment may be rendered against them in said 
action. 

ARTICLES BEARING IMITATIONS OF A REGISTERED TRADE-MARK OR OF A 
COMMERCIAL NAME FORBIDDEN ENTRY. 

Sec. 33. No article of imported merchandise to which is affixed 

1. An imitation of a registered trade-mark, or 

2. An imitation of the commercial name of a resident of the United 

States or of a citizen or subject of a government which by 
treaty or convention affords similar privileges to citizens of 
the United States, or of a person who has a bona fide indus- 
trial or commercial establishment in the territory of such 
government, or 

3. A name calculated to induce the public to believe that the arti- 

cle is manufactured or produced in the United States or in 
a foreign country or a place other than the country or place 
in which it was in fact manufactured or produced 
shall be admitted to entry at any custom-house of the United States. 

To aid the officers of the customs in enforcing this prohibition, any 
registrant of a trade-mark in the Patent Office, and any person enu- 
merated in clause 2, may require his registered trade-mark or his com- 
mercial name to be recorded in the Department of the Treasury under 
such regulations as the Secretary of the Treasury shall prescribe, and 
may furnish to the Department facsimiles of such trade-mark or com- 
mercial name, and thereupon the Secretary of the Treasury shall cause 
one or more copies of such registered trade-mark or commercial name 
to be transmitted to each collector or other proper officer of the 
customs. 

The Secretary of the Treasury may make rules permitting, in the 
case of mistake, the removal of the imitation mark or commercial name 
or false name of country or place, and such prohibition of entry shall, 
when such rules are complied with, be removed. 

FEES. 

Sec. 34. There shall be paid to the Commissioner of Patents: 
On filing each original application for registration of a mark, ten 
dollars: 



78 REVISIOI^ OF STATUTES EELATING TO PATENTS, ETC. 

On filing each application for the renewal of the registration of a 
trade-mark, five dollars; 

On an appeal from the examiner in charge of trade-marks to the 
Commissioner of Patents, ten dollars; 

On an appeal from the Commissioner of Patents to the court of 
appeals for the District of Columbia, ten dollars; 

For certified and uncertified copies of certificates of registration and 
other papers, and for recording assignments and other papers, the 
same fees as required by law for copies of patents and for recording 
assignments and other papers relating to patents. 

COSTS. 

In all cases of notice of opposition to registration or of application 
for an interference, or for the cancellation of a registration or of appeal 
from a decision therein, the person giving notice, appljang, or appeal- 
ing shall file with the notice, application, or appeal security for costs 
to be paid to the opposing party if successful, and in default of such 
security, the Commissioner may refuse to entertain such proceeding 
and the court may dismiss the appeal. 

The Commissioner of Patents shall fix, by rule, the costs to be paid 
to the successful party in any such proceeding or appeal in the Pat- 
ent OfBce and the form of security therefor. The Supreme Court 
of the United States shall fix, by rule, the costs on appeal to or from 
the court of appeals of the District of Columbia, and the form of 
security therefor. 

SAVING CLAUSE. 

Sec. 36. The repeal of a law or any part of it specified in the 
annexed schedule shall not affect or impair any act done or right accru- 
ing, accrued, or acquired, or liability, forfeiture, or penalty incurred, 
prior to tTanuary first, nineteen hundred and three, under or by virtue 
of any law so repealed, but the same may be asserted, enforced, prose- 
cuted or inflicted as fully and to the same extent as if such law had not 
been repealed; and all actions and proceedings, civil or criminal, com- 
menced under or by virtue of the law so repealed, and pending on 
December thirty-first, nineteen hundred and two, may be prosecuted 
and defended to final effect in the same manner as they might under 
laws then existing, unless it shall be otherwise specially provided by 
law. 

CONSTRUCTION OF TERMS. 

Sec. 36. In construing this Act, or an indictment or other pleading 
in a case provided for b}^ this Act, the following rules must be observed, 
except when a contrary intent is plainly apparent from the context 
thereof. 
Territory. 

The term "Territory" includes the Territories, the District of 
Columbia, and all other territory in the possession or under the juris- 
diction or control of the United States not included within a State. 
Person. 

The term "person" or any word or term used to designate the appli- 
cant or registrant or other entitled to a benefit or privilege under this 



BILL PEOPOSED TRADEMAEKS. 79 

Act includes a partnership, association, company, corporation, public 
or private, community, union of persons, or State, as well as a natural 
person. 

Numher — Gender. 

The singular number includes the plural, and the plural includes 
the singular. The masculine gender includes the feminine and neuter. 

Applicant — Registrant. 

The terms ''applicant" and " registrant" embrace the successors and 
assigns of such applicant or registrant. 

Infringeinent. 

The term "infringement" includes every wrongful or unauthorized 
use in commerce with foreign nations or among the several States or with 
the Indian tribes, or in the territory of the United States, or the repro- 
duction or imitation of any registered trade-mark affixed to goods of 
substantially the same class as those described in the certificate of 
registration. 

limitation. 

An "imitation" of a trade-mark is that which so far resembles a 
genuine trade-mark as to be likely to induce the belief that it is genu- 
ine, whether by the use of words or letters similar in appearance or in 
sound, or by any sign, device, or other means whatsoever. 

Affixed. 

A trade-mark is deemed to be " affixed " to an article of merchandise 
when it is placed in any manner in or upon either — 

1. The article itself; or, 

2. A box, bale, barrel, bottle, case, cask, or other vessel or pack- 
age, or a cover, wrapper, stopper, brand, label, or other thing, in, by, 
or with which the goods are packed, inclosed, or otherwise prepared 
for sale or disposition. 

Knowingly. 

The term "knowingly" imports a knowledge that the facts exist 
which constitute the act or omission unlawful, and does not require 
knowledge of the unlawfulness of the act or omission. 

Country of Origin. 

The words "country of origin" as applied to trade-marks refer to 
the country in which the trade-mark was first registered and of which 
the applicant is a citizen or subject, or in which he has a bona fide 
industrial or commercial establishment. 

Marh. 

The term "mark" includes marks, trade-marks, and symbols. 

CONSTRUCTION OF ACT. 

Sec. 37. The provisions of this Act, so far as they are substantially 
the same as those of laws existing on December thirty -first, nineteen 
hundred and two, shall be construed as a continuation of such laws, 
modified or amended to the language employed in this Act and not as 
new enactments; a reference in laws not repealed to provisions of law 
incorporated into this Act and repealed shall be construed as applying 
to the provisions so incorporated. 



80 REVISION OF STATUTES RELATING TO PATENTS, ETC. 
PENDING APPLICATIONS. 

Sec. 38. All applications for registration pending when this Act 
shall take effect may be proceeded with thereunder subject to its 
requirements, and for such purpose the applicant shall amend his appli- 
cation to conform to the provisions of this Act. 

REGISTRATIONS HERETOFORE MADE — ACT OF EIGHTEEN HUNDRED AND 

SEVENTY. 

Sec. 39. All trade-marks registered prior to the third day of March, 
eighteen hundred and eight3^-one, shall be deemed abandoned unless 
application for registration thereof as prescribed in this Act be made 
prior to the first day of Ma}^, nineteen hundred and three, in default 
whereof the registrant shall not thereafter be entitled to notice from 
the Commissioner of Patents under section eleven of this Act. 

ACT OF EIGHTEEN HUNDRED AND EIGHTY-ONE. 

All registrations made after the third day of March, eighteen hun- 
dred and eighty-one, and prior to the first day of January, nineteen 
hundred and three, shall remain in full force and effect to the end of 
the term for which originally granted, unless surrendered and 
re-registered; but the registrants shall be entitled to institute pro- 
ceedings for infringement provided herein only when such infringe- 
ment takes place in commerce with foreign nations or with the Indian 
tribes. 

REGISTRATION BY RESIDENTS OF HAWAII. 

Sec. 40. Residents of the Territory of Hawaii, if qualified under 
section five, may file applications for registration of marks under this 
Act with the treasurer of the Territory of Hawaii, who shall transmit 
the same to the Commissioner of Patents. The date of filing of such 
applications in the United States Patent Office shall, for the purposes 
of this Act, be deemed to be the same as the date of filing with the 
treasurer of the Territory of Hawaii. 

In proceedings upon applications so filed, the time allowed within 
which an act may be done, a notice may be given, a document may be 
filed, or an appeal may be taken, shall be double the time elsewhere 
provided in this Act. 

INTERNATIONAL REGISTRATION OF TRADE-MARKS. 

Sec. 41. Upon and after the adhesion of the United States to the 
agreement for the international registration of trade-marks concluded 
at Madrid, April fourteenth, eighteen hundred and ninet3^-one, all cor- 
respondence with the International Bureau at Berne in regard to marks 
to be registered under such agreement by citizens of the United States 
or aliens entitled to the advantages of citizens under such agreement 
shall be conducted by the Commissioner of Patents, and all necessary 
rules, forms, and orders as to procedure and for carrying this Act into 
effect shall be prescribed and may be amended by him from time to 
time. 



BILL PROPOSED — -TRADEMARKS. 



81 



AMENDATORY AND REPEALING STATUTES. 

Sec. 42. No provision of this Act, or any part thereof, shall be 
deemed repealed, altered, or amended by the passage of an}" subsequent 
statute inconsistent therewith, unless such statute shall explicitl}" refer 
thereto and directly repeal, alter, or amend this Act accordingl}^ 

repeal. 

Sec. 43. The laws or parts thereof specified in the schedule hereto 
annexed and all other Acts and parts of Acts inconsistent with the 
provisions of this Act are repealed. 

SCHEDULE OF LAWS REPEALED. 
REVISED STATUTES. 



Date. 


Title. 


Chap- 
ter. 


Section. 


Subject. 


June 22,1874 
June 22,1874 


XXXIII 
LX 


2 


2496 

4937 

to 

4947 


Prohibition upon importation of simu- 
lated watch movements, etc. Re- 
enactment of chapter 125, March 3, 
1871. 

Registration of trade-marks, etc. Re- 
enactment of chapter 230, sections 
77 to 84, July 8, 1870. 



STATUTES AT LARGE. 



Date. 


Chapter. 


Section. 


Volume. 


Page. 


Subject. 


July 


8, 1870 


230 


77 
to 
84 


16 


210 
to 

212 


Registration of trade-marks, 
etc. 


Mar. 


3,1871 


125 




16 


580 


Prohibition upon importation 
of simulated watch move- 
















. 










ments. 


Aug. 


14, 1876 


274 


All. 


19 


141 


To punish the counterfeiting of 
trade-marks, etc. 


Mar. 


3, 1881 


138 


All. 


21 


502 


Registration of trade-marks, 
etc. 


Aug. 


4, 1882 


393 


All. 


22 


298 


Registration of marks used prior 














to March 3, 1881. 


Aug. 


27, 1894 


349 


5 


28 


547 


Marks on foreign-made goods. 


Aug. 


27, 1894 


349 


6 


28 


547 


Foreign -made goods bearing 
domestic marks excluded. 


July 


24, 1897 


11 


8 


30 


205 


Marks on foreign-made goods. 
Re-enactment of chapter 
349 August 27, 1894. 


July 


24, 1897 


11 


11 


30 


207 


Foreign-made goods bearing 
domestic marks excluded. 
Re-enactment of chapter 
349 August 27, 1894. 



82 REVISION OF STATUTES RELATING TO PATENTS, ETC. 
WHEN ACT TO TAKE EFFECT. 

Sec. M. This Act shall take effect January first, nineteen hundred 
and three. When construed in connection with other statutes, it must 
be deemed to have been enacted on the day of , nine- 

teen hundred and two, so that any statute enacted after that day is to 
have the same effect as if it had been enacted after this statute. 

Notes. 

The title of the bill is so drawn as to express the intention of Con- 
gress to act within the powers granted to it by article 1, section 8, of 
the Constitution. 

Section 1 follows the practice established by Congress when it gave 
the short title "The National Bank Act" to the act entitled ''An act 
to provide a national currency secured by a pledge of the United States 
bonds, and to provide for the circulation and redemption thereof," 
approved June 3, 1864. (Act approved June 20, 1874.) 

The practice is followed in the State of New York and elsewhere. 

Section 2 states the scope of the bill. The trademark act of 1881 
refers to trademarks used ' ' in commerce with foreign nations or with 
the Indian tribes only." The bill refers in addition to ''commerce 
among the several States." It also provides for the use of marks in 
commerce in the vast territor}^ of the United States not included within 
the boundaries of the several States. 

The act of 1881 refers to trademarks only. The present bill refers 
to "marks," "trademarks," "commercial names," and "symbols," 
which words seem to cover all the means of identification used in com- 
merce. It is intended to exhaust the power of Congress to legislate 
on the subject. 

Section 3 provides for the marking of articles of foreign manufacture 
with the name of the country of origin. This section is taken from 
the tariff act of 1897 (sec. 8), modified. (See sec. 5, tariff' act of 1894.) 
As this bill includes the regulation of marks used in commerce, it is 
presumed that the marking required under the tariff' act should be 
included also. 

Section 4 provides that foods and medicines bearing deceptive marks 
or false marks of inspection may be excluded at the custom-houses 
if foreign, and may be seized if found in the territory of the United 
States, not included within a State, or in commerce among the several 
States or with the Indian tribes. This is a regulation of commerce in 
which the mark plays the most important part. In a scheme for the 
regulation of commerce in the matter of marks all marks whether 
producing a beneficial or harmful effect have a place. 

Section 5 extends the right to register marks to "a person who has 
a bona fide industrial or commercial establishment in the territory" of 
a government which, b}^ treaty or convention, affords similar privileges 
to citizens of the United States, in addition to those who may now reg- 
ister. This is included to make the law comply with article 3 of the 
Convention for the Protection of Industrial Property, as amended at 
Brussels. The bill further extends the right to register to public cor- 
porations, to common carriers, communities, unions of persons, and 
to States. (See definition of person, sec. 36.) 

The section also widens the class of marks which may be registered, 
over the law of 1881, so as to include marks used in commerce among 
the several States and in the territory of the United States not within 
any State, and primarily within the jurisdiction of the United States. 



NOTES TO BILL PROPOSED TRADEMARKS. 83 

The word "mark" is used advisedly. It is intended to make a dis- 
tinction between a mark unregistered but used, and the same mark 
when registered. It is then designated a trademark. The mark, 
however, must have the qualities of a trademark and is not changed 
in character or purpose by registration. Its quality as a distinguish- 
ing mark is that which makes it a necessary part of commerce. 

Section 6 inhibits the registration of certain marks excluded from 
registration by sections 2, 3, and 4 of the act of 1881. 

It requires that the mark be new to the class of goods to which 
applied, but use without registration in a foreign countr}^ or within 
a single State will not prevent its registration nor invalidate it when 
registered, in case the applicant believed himself, at the time of making 
the application, to be the first to adopt and use the mark. 

It permits the registration of marks registered abroad in order to 
conform to article 6 of the Convention for the Protection of Industrial 
Property. 

It excludes marks used solely within the boundaries of a single 
State. This is made necessary by the extension of registration to 
marks used in interstate commerce. It is, however, not understood 
to give a right to infringe a registered mark within the limits of a 
single State. 

Section 7 provides a form of application after the manner prescribed 
in the trademark laws of other adherents to the Convention for the 
Protection of Industrial Property. 

The use of a form has a precedent in the copyright act and will cause 
a great saving of expense in applications as well as in the administra- 
tion of the registration office. 

This section retains the oath as a safeguard against the registration 
of a mark by one not the owner, and the provision for a drawing for 
the purpose of the publication of the mark. (The attempt is being 
made in countries where publication of notice of application for regis- 
tration is required to substitute a representation for a description of 
the mark.) 

The form provides for the service on a nonresident registrant by 
service on the Secretar}'- of the Treasury. There is always a Secretary, 
but an individual designated by the registrant might die or move away. 
Notice to the registrant b}^ the Secretary is provided for. 

Section 8 is intended to fulfill the requirements of priority prescribed 
by article i of the Convention for the Protection of Industrial Prop- 
evtj, concluded at Paris March 20, 1887. The "period of priority" 
referred to in the Convention is a period of time during which a mer- 
chant, manufacturer, or other person may apply for registration in 
other countries after the first application. It is a provision to render 
possible the obtaining of the right to use a mark in all of the countries 
adhering to the Convention. 

Section 9 specificall}^ prescribes an examination to be followed by 
publication. This is intended to keep off' the record any mark not the 
subject of registration by the applicant, either because of his residence 
in a country which does not grant reciprocal rights, etc., or its inhibi- 
tion by section 6 or its ownership b}^ another. The publication, when 
not developing opposition, adds greatl}^ to the probability of the nov- 
elty of the mark and its right to registration. 

The act of 1881 does not in terms provide for examination and it 
makes no provision for publication anterior to registration. 



84 REVISION OF STATUTES RELATINO TO PATENTS, ETC. 

A form of certificate of registration is provided as in the case of 
copyright. (Rev. Stat., see. 495-7.) 

The certificate is made to bear the date of the application and may 
be antedated in case of prior application for registration abroad. 

The term of the registration is fixed at ten years, except in the case of 
registration by citizens or subjects of foreign countries, etc., in which 
case registration here expires with registration there, but can not exceed 
ten years. The register of trade-marks is now clogged with a multi- 
tude of abandoned marks and marks which, under the present practice, 
would not be registered. A shorter registration than the thirty years 
provided by the act of 1881 will prevent these evils in part. 

The certificate may issue to the assignee of the mark. Under the 
law of 1881, as construed by the Commissioner, this is not now allowed. 
The result is that in case of the transfer of a mark, pending applica- 
tion for its registration, either the certificate issues to one who is not 
the owner or the owner must apply anew and pay a new fee. 

Section 10 provides that notice of refusal of registration shall be 
given to applicant, and follows present practice. 

Section 11 provides for opposition to registration. This is not con- 
tained in the act of 1881. It is a feature of several foreign trade-mark 
laws. A party who may be injured by the registration of the mark 
should have the right to prevent its registration by one not lawfully 
entitled to it. 

Section 12 provides for the determination of priority of use of a 
mark or the sufficiency of an objection to its registration. The act of 
1881 provides only for disputes between an applicant and a previous 
registrant, or between applicants, "when he [the Commissioner] shall 
follow, so far as the same may be applicable, the practice of courts of 
equity of the United States in analogous cases." This language is 
exceedingly vague and the practice prescribed does not conform to 
that rule of certainty in a statute which should prevail. 

Section 13 provides for the cancellation of registration. Under the 
existing practice of many foreign countries, registration here must 
precede registration by a citizen of the United States there. The reg- 
istration here is evidenced in the foreign country by a certified copy, 
and nothing except the refusal of the Commissioner of Patents to fur- 
nish a certified copy stands in the way of the use by a wrongful regis- 
trant of his registration here to obtain registration abroad; besides the 
wrongful registration may be made use of to deceive. 

This is new. 

Sections l4 to 19 provide for appeals from the examiner in charge 
of trademarks to the Commissioner in person, and from the Commis- 
sioner to the court of appeals of the District of Columbia, and from 
the court of appeals to the Supreme Court of the United States. 

The use of marks in commerce and their regulation in this matter 
has become so important that it seems that questions inv^olving marks 
should be allowed the highest judicial judgment. No appeal was pro- 
vided for in the act of 1881. Sections 14 to 18 follow the language of 
the patent statute. (Rev. Stat, sees. 1:909-1:911.) 

Section 20 provides for obtaining registration by suit in equity. 
This is substantiall}^ a copy of a similar provision foi* compelling the 
grant of a patent for an invention. (Rev. Stat., sec. 4913.) 

Section 21 grants the privilege of a renewal of the registration, on 
the payment into the Treasur}^ of the fee prescribed, if the applicant 
fulfills the conditions required for an original registration. This seems 



NOTES TO BILL PROPOSED TRADEMARKS. 85 

entirely just. A foreigner, for example, who has allowed his regis- 
tration to lapse in his own country, should not be allowed to renew his 
registration here, nor should a resident of the United States be allowed 
to re-register a trademark which has ceased to be used in commerce 
other than that within the boundaries of a single State. This section 
provides means for finding out whether this has occurred. 

The act of 1881 allows re-registration if application therefor is made 
at an}^ time within six months prior to the expiration of the original 
registration. 

Section 22 provides for the amendment of a registration. There is 
no provision in the act of 1881 for amendment, and it has therefore 
been the practice to apply one or more times for registration of the 
same mark and pay a fee each time as on an original application. The 
result of this practice is to leave in force two or more registrations 
which are antagonistic to each other. 

This is new. 

Section 23, providing for the recovery of damages from one who 
surreptitiously secures for himself the registration of the mark of 
another, is substantially a copy of section 9 of the act of 1881. 

Section 24 provides that a registered mark shall be assignable, 
together with the good will of the business; that an assignment may 
be made by a trustee in bankruptcy or by an officer of the court, and 
that notice of the transfer shall be published. The assignment may be 
acknowledged as in the case of patents to make it prima facie evidence. 
{See amendment to sec. 4898, Rev. Stat., approved March 3, 1897.) 

The act of 1881 permits the Commissioner of Patents to make rules 
and regulations and prescribe forms for the transfer of the right to 
use trade-marks and for recording such transfers. 

Section 25 provides for notice of registration. If the counterfeit- 
ing or imitation of a mark carries a penalty, then notice should be 
given to the public of its existence. The simplest manner of giving 
such notice seems to be by affixing it to the mark directly or to the 
goods or their envelopes, as in the case of notice of letters patent. 

This is new. It follows the language of the patent statute. (Rev. 
Stat., sec. 4900.) 

Section 26 provides a penalty for falsely using such notice. As the 
notice will carry weight because of the rights created by registration, 
the unauthorized use of the notice should be prevented. 

This is new. It follows the language of the patent statute. (Rev. 
Stat., sec. 4901.) ^ 

Section 27 provides that damages may be recovered for the infringe- 
ment of the registered mark of another. As Congress has power to 
regulate the use of the mark, it has power to provide for recompense 
to the party injured by the infringement. 

Under the act of 1881, two things must concur to entitle the injured 
party to damages — the counterfeiting, or copying, or colorable imita- 
tion of a trade-mark, and the act of affixing the same to merchandise. 
This limitation is removed and the registrant is given the right to sue 
for damages for an}^ infringement. (See definition sec. 36.) 

No provision is made in the act of 1881 for increasing the damages. 
By this section the court is given power to treble the damages. The 
section follows the language of the patent statute. (Rev. Stat., sec. 
4919.) ^ 

Section 28 recites certain defenses which may be made in a suit for 
damages for the infringement of a registered trade-mark. 



86 REVISION OF STATUTES RELATING TO PATENTS, ETC. 



This is new. It follows the patent statute (Rev. Stat., sec. 4920). 

Section 29 contains a more definite statement of the powers of the 
circuit court to grant injunctions and to take an account and assess 
damages than is contained in the act of 1881. It gives the court power 
to increase the damages as in actions at law. 

The section provides for the impaneling of a jury, to which may be 
submitted questions of fact in the manner provided in suits under let- 
ters patent for inventions. 

This is new in trade-mark legislation, but follows the language of the 
patent statute. (Rev. Stat., sec. 4921.) 

Section 30 provides that application for registration shall be equiv- 
alent to use. This is necessary to carry out the convention of 1883 in 
its spirit. (See note to sec. 8.) The foreigner is granted the privi- 
lege of finding out whether he can legally use his foreign mark here, 
through the Patent Ofiice rather than through use, which may be an 
infringing use for which he will be liable to suit for damages. It will 
further be of great aid to our own citizens, in that it will minimize the 
risk now accompanying the adoption of a mark. 

Section 31 provides for the punishment of a person who knowingly, 
for use in commerce with foreign nations, or among the several States, 
or with the Indian tribes, or in the territory of the United States, (1) 
counterfeits a registered trade-mark; (2) affixes such mark to mer- 
chandise; (3j sells or offers for sale an article of merchandise to which 
such mark is affixed; (4) has in his possession such a mark or a die, 
etc., for the purpose of counterfeiting the same; (5) has an article of 
merchandise with such a mark as to appear to indicate the quantit}^, 
quality, character, place of manufacturing or production of the article 
or inspection, but not indicating it truly, by a fine of not more than 
$500 and the deprivation of all rights under the act. 

This section is quite distinct from the penal act of 1876, which was 
not limited to commerce with foreign nations, or among the several 
States, or with the Indian tribes, or in the territory over which Con- 
gress alone has control. 

This section is further limited in the punishment meted out to the 
offender to a fine of not more than $500 and the deprivation of rights 
under this act, instead of the fine of not more than $1,000 and impris- 
onment for not more than two years provided in the act of 1876. 

The section is limited to those who "knowingly" do the acts for- 
bidden. It may well be said that in view of the fact that no unregis- 
tered mark can form the basis of proceedings under the act that all 
persons should be presumed to know the contents of the register of 
trade-marks, but this section does not go so far. It provides for the 
punishment of those intentional wrong-doers who imperil the health 
and property of the community by attempted substitution of bad arti- 
cles for good. The section is based on section 364 of the penal code 
of New York, which has been in force since the adoption of the code 
in 1887, and has been found to work well. 

Section 32 is intended to provide a summar}^ remedy for offenses 
against the trade-mark act analogous to that provided by the tariff' law. 
It authorizes the seizure of goods bearing marks that simulate regis- 
tered trade-marks and tne sale thereof after proceedings duly had to 
determine the legality of the seizure. It observes the constitutional 
limitations of Congress in the regulation of commerce, and protects 
the owner of goods against illegal seizure by requiring security from 
the petitioner, the amount and character of which is to be determined 



BILL PKOPOSED TRADEMARKS. 87 

1 

by the court in accordance with the circumstances of the case. It sim- 
plifies the remedy of the person injured by an unlawful seizure, giving 
a single action against the petitioner and the sureties upon his bond. 

Section 33 prohibits entry at any custom-house of the United States 
of imported merchandise to which is affixed a mark or name which 
imitates a registered trade-mark or a commercial name, etc. , thus extend- 
ing the protection accorded to our own citizens to citizens of foreign 
countries which grant reciprocal rights. This is based on section 11 
of the tariff act of 1897 (which superseded section 5 of the tariff act of 
1891 and section 2196, Revised Statutes), but simplifies the duties of the 
Department of the Treasury prescribed by that section by limiting its 
records to registered marks and to commercial names. This is now the 
practice under the rules prescribed by the Secretary of the Treasury, 
except as to commercial names. These can readily be identified, and 
under the convention for the protection of industrial property are 
exempt from registration. 

Section 34 prescribes the fees to be paid under the act. The fee on 
filing the application has been placed at $10 instead of the present fee 
of $25, which seems to work a hindrance to registration. A fee of $5 
on filing an application for renewal of registration is required. There 
is no fee under the act of 1881. The fee on appeal to the Commis- 
sioner of Patents is fixed at $10, in analogy to patent practice. There 
is now no fee for a proceeding before the Commissioner to review 
the action of the examiner in charge of trade-marks. The fees for 
appeals from the Commissioner are made the same as on patent appeals. 

The section also provides for costs to the successful party in all pro- 
ceedings under the act in the nature of a contest. No reason is 
apparent why a different rule as to costs should prevail in proceedings 
connected with the registration of trade-marks than in litigation over 
the same after registration. 

Section 35 provides for the saving of rights under laws repealed by 
this act, and for the continued prosecution of all pending actions, suits, 
and proceedings, civil and criminal. This is wholly distinct from the 
provision of the act of 1881, which expressly states that it takes away 
no remedy at law or in equity. Such provision is omitted as not 
required, since nothing is taken away by this act except intentionally 
and expressly to make it more effective. 

Section 36 construes terms used in the act — viz, Territory, person, 
applicant, registrant, infringement, imitation, affixed, knowingly, and 
country of origin — and prescribes that the singular shall include the 
plural and the masculine the feminine. It has enabled the text of the 
act to be materially abbreviated. 

Section 37 requires that the act shall be construed as a continuation 
of the laws repealed. This is intended to refer more especially to the 
sections of the tariff act than to the trade-mark laws of 1870, 1876, 
1881, and 1882, with which this act has little in common. 

Section 38 provides that applications pending at the time this act goes 
into effect shall be amended to conform thereto and shall thereafter be 
proceeded with thereunder. It is desirable that one form of procedure 
only shall be employed in the Patent Office at a time, and, further, 
that all trade-mark registrations for the same period shall be uniform. 

Section 39 practically casts into oblivion all registrations prior to 
the act of 1881. The commissioner is not required to give notice to 
any registrant prior to that act. These marks, if in such general use 
S. Doc. 20 7* 



b» REVISION OF STATUTES RELATI]!TG TO PATENTS, ETC. 

that the Commissioner would taKe notice of them on mat account, are 
not strengthened by the void registration under the act of 1870. The 
registrants of trade-marks under the act of 1870 have had for nearly 
twenty 3'ears the right to register under the act of 1881 without fee. 
It is to be presumed that they have availed themselves of that privilege. 

This section provides that registrations of trade-marks under the act 
of 1881 shall continue for their full terms, but limits the remedy for 
infringement to that taking place in commerce with foreign nations 
and the Indian tribes. As the remedies granted to trade-marks regis- 
tered under this act are more extensive, it is expected that all regis- 
trations of marks actually in use will be surrendered by making new 
registrations limited to the shorter term. The act is drawn on the lines 
of permitting only one registration of the same mark at a time. 

Section 10. A curious anomaly exists at the moment in that the reg- 
istration of trade-marks and the regulation of their use in commerce 
in Hawaii is under a local law. This section is intended to bring these 
marks into the United States Patent Office. 

Section 41 provides for the contingency of the adhesion of the United 
States to the Agreement concerning the international registration of 
trade-marks concluded at Madrid April 14, 1891. It is evident that 
the correspondence between the International Bureau at Berne in 
regard to the registration of trade-marks may be conducted with greater 
facility by the Patent Office directly than through the Department of 
State. It is understood that the practice of direct communication 
between the bureau immediately concerned with trade-marks and the 
International Bureau at Berne is usual in foreign countries. 

It further seems to us that the Commissioner of Patents should be 
required to make rules, forms, and orders to carry the section into 
effect, following the method adopted in the bankruptcy act, which 
requires rules, etc. , for such purposes to be made by the Supreme 
Court. The reasons applicable in that case apply to this case also, but 
with greater force, since the agreement of Madrid may be changed 
and modified when Congress is not in session. 

Section 42 provides that no amendment of this act shall be made 
without special reference thereto. Considering the importance of the 
subject, it is intended that the act shall not be amended indirectly and 
without adequate notice to the people. 

Section 43 enumerates laws repealed. The substance of all the acts 
mentioned may fairly be said to be included in this act, except the act 
of 1882, which excepted from the limitations of the act of 1881 all 
marks used before the passage of the latter act. No adequate reason 
appears why any distinction should be made in this country between 
marks used at one period or another. In Great Britain such a dis- 
tinction is made because prior to 1876 the common-law rules governed, 
whereas after that date a statutory definition came into force. It was 
only just that trade-marks good under the law when adopted should 
remain valid, whatever was required for the validity of new marks. 
This condition of things has never prevailed here. Section 13 of the 
act of 1881, relating to foreign registration, is omitted as unworkable. 

Section 44 provides that the act shall take effect on the 1st day of 

January, 1903, and that all statutes enacted after shall be deemed 

to have been enacted subsequent to this act. A trade-mark statute is 
one of such supreme importance, not only to our own people, but also 
to those with whom we nave commercial relations, that it seems just 
that ample notice should be given of its requirements. • 



DISSENTING REPORT OF MR. GREELEY WITH REFERENCE TO 
THE REVISION OF THE TRADEMARK LAW. 



Patents are the creation of statute law, and the existing laws con- 
cerning patents are readily determined from an inspection of the statute 
books. Trademarks, as well as other marks, trade and commercial 
names, on the other hand, do not owe their origin to statutes. The 
right of property in a trademark is recognized by the common law, 
and civil remedies for its protection existed long prior to any legisla- 
tion by Congress and have remained in full force since such legislation. 
In order to determine what changes should be made in the existing 
laws concerning trade and other marks and trade or commercial names 
it is important to consider not only the acts of Congress relating to 
this subject and the causes which led to their enactment, but also the 
origin and extent of the protection afforded by the unwritten law. 
This can best be done b}^ reviewing the history of trademarks and 
trademark protection in the United States from the earliest times. 

NO REFERENCE TO TRADEMARKS IN THE CONSTITUTION. 

-While it is expressly provided in the Constitution that Congress shall 
haA^e power "to promote the progress of Science and Useful Arts by 
securing for limited Times to Authors and Inventors the exclusive 
Right to their respective Writings and Discoveries,"^ no provision 
giving Congress in express terms the power to provide for the protec- 
tion of the distinctive marks used in commerce by manufacturers and 
traders to' distinguish their goods from other goods of the same class — 
in other words, trademarks — is there found. 

The omission from the Constitution of all reference to so important 
a subject as the protection of trademarks has become to modern com- 
merce a subject not less important to the public interest at the present 
time than the protection of inventors by patents or the protection of 
authors by copyright, and a subject of vital importance to the growing 
export trade in manufactures, might properly be taken as significant 
of an intent on the part of the f ramers of the Constitution that Con- 
gress should not have the power to legislate on the subject if, at the 
time of the adoption of the Constitution, this subject had been recog- 
nized as one of importance to the commerce of the United States, either 
internal or foreign. That it was not so recognized at the date of the 
adoption of the Constitution or for many years thereafter, and the 
reasons why it was not and could not be so recognized without a more 
than human insight into the future, are clear from a consideration of 
the industrial and commercial conditions of the time. 

^ Art. I J sec. 8, eighth clause. 

89 



90 EEVISION OF STATUTES RELATING TO PATENTS, ETC. 

COMMERCIAL CONDITIONS IN THE COLONlI^S. 

The three millions of people then in the United States were "for 
the most part exclusively addicted to agriculture and likely from local 
circumstances to remain in this condition." (Federalist, No. XI.) In a 
country so newly settled and so well adapted to agriculture, manufac- 
turing industries and commerce would from natural conditions have 
been of slow growth if their development had been unhindered by 
other causes. Their development, however, had not been unhindered. 
Throughout the colonial period the settled policy of Great Britain had 
been to secure for her own manufacturers the monoply of every branch 
of consumption in the colonies, to discourage all attempts to manufac- 
ture in the colonies such articles as could be provided for them by the 
manufacturers of the mother country. The colonies were held under 
restraint so absolute that, beyond the common domestic industrial and 
the most ordinary mechanical employments, no kind of manufactures 
was permitted. Every form of industry which could compete with 
British manufactures was discouraged or forbidden. Even Lord 
Chatham declared that if he had his wq.j he would not allow the col- 
onists to make so much as a hobnail for themselves. Adam Smith in 
his Wealth of Nations, says of the attitude of Great Britain toward 
certain industries in the American colonies that — 

She prohibits the exportation from one province to another by water, and even the 
carriage by land upon horseback or in a cart, of wools and woolen goods, of the pro- 
duce of America, a regulation which effectually prevents the establishment of any 
manufacture of such commodities for distant sale, and confines the industry of her 
colonists in this way to such coarse and household manufactures as a private family - 
commonly makes for its own use, or for that of some of its neighbors in the same 
province. 

The legislation of Great Britain adopted with the purpose of pre- 
venting the development of manufacturing industry and commerce in 
the colonies is all a matter of record and a review of it may be found 
in the History of Iron in All Ages, by Swank (Philadelphia, 1892), also 
in Our Country, Senate Document, No. 438, Fifty-sixth Congress. 
That it was effective for its purpose is a matter of history. At the 
time of the adoption of the Constitution, the commerce of the United 
States is said to have been ''at the lowest point of declension" (Fed- 
eralist, No. XV), and it appears from the Report on Manufactures, 
C' particularly the means of promoting such as will tend to render the 
United States independent of foreign nations for military and other 
supplies "), submitted to the Second Congress by Alexander Hamilton, 
then Secretary of the Treasury, that "the expediency of encouraging 
manufactures in the United States was not long since deemed very ques- 
tionable," and though he sa3^s that the expediency of encouraging man- 
ufactures "appears at this time to be pretty generally admitted," he felt 
obliged in his report to recognize the fact that there were "neverthe- 
less, respectable patrons of opinions, unfriendly to the encouragement 
of manufactures," and to recognize this fact to the extent of stating 
fully and fully answering the arguments by which such opinions were 
defended. 

PURPOSE OF THE UNION. 

While it is also to be said that one of the principal purposes to be 
answered by the union was "the regulation of commerce with other 
nations and between the States" (Federalist, No. XXIII), and, in the 



DISSENTING REPORT TRADEMARKS. 91 

words of Mr. Webster in his argument in the case of Gibbons v. Ogden 
(9 Wheaton, 1), quoted by the Supreme Court in Guy v. Baltimore 
(100 U. S., 131), "it had its immediate origin in the necessities of com- 
merce, and for its immediate object the relief of these necessities by 
removing their causes, and by establishing a uniform and steady sys- 
tem," it is clear from the then existing conditions that the commerce 
of the time between the States was in a very small degree concerned 
with commodities of domestic manufacture. 

As late as 1829 it was said of the manufacturing interests of this 
country that — 

The manufacturing operations in the United States are all carried on in little ham- 
lets, which often appear to spring up in the bosom of some forest, gathered around 
the waterfall that serves to turn the mill wheel. These villages are scattered over a 
vast extent of country — from Indiana to the Atlantic, and from Maine to North Caro- 
lina — instead of being collected together, as they are in England, in great manu- 
facturing districts.^ 

DEVJJLOPMENT OF TRADEMARK LAW OF GREAT BRITAIN. 

In Great Britain, prior to the date of the adoption of the Constitu- 
tion of the United States and for many years thereafter, the importance 
of the protection of trademarks was little understood, notwithstanding 
that the importance of the development of manufacturing industries 
and commerce was fully recognized and every effort was made to 
stimulate and encourage its growth, with the result that at that time 
Great Britain was recognized as the leading nation of the world in 
manufactures and in commerce, and the fact that even then the impor- 
tance of trademarks was not understood is significant, since it was to 
Great Britain, the parent country, that the framers of the Constitu- 
tion mainly looked for information and suggestions to guide them in 
determining the provisions to be incorporated in that document. Great 
Britain not only had then no special law on the subject, but it had not 
then been recognized by the courts of that country that there could be 
any property right in the distinctive mark used by a manufacturer or 
trader on goods sold by him. But three cases, so far as can be ascer- 
tained from the reports, involving the right to the use of a trademark 
(one in 1590, concerning the use of a mark on cloth; one in 1712, con- 
cerning the use of the Great Mogul stamp on cards, and one in 1783, 
concerning the use of a mark for a medicinal preparation) had come 
before the courts of Great Britain for decision. In the most impor- 
tant one of these cases (Blanchard v. Hill, 1712, 2 Atk., 481, Cox 
Manual, 2), so little was the subject then understood, an injunction was 
refused on a state of facts on which an injunction would certainty be 
granted to-day. (Amoskeag Mfg. Co. v. Spear, 2 Sand., S. C, 599; 
Cox Am. Trademark Cases, 87.) As the conditions of commerce 
improved, particularly the facilities for intercommunication between 
distant places, by which it was made possible for manufacturers to 
compete with others than those in their immediate neighborhood, the 
importance of the protection of trademarks began to be recognized 
and the British courts found it necessary to the protection of honest 
trade and the prevention of fraud to interpose by injunction to pre- 
vent their infringement. It was not, however, until 1838 that an 
English court (in the case of Millington t\ Fox, 3 My. & Cr., 338; 

^ Science of Mechanics, Allen, 1829. 



92 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Cox Manual, 63) held that the owner of a trademark was entitled to 
injunction against the use of his mark by those who used it without 
fraudulent intent; in other words, recognized the right to the exclusive 
use of a trademark as a property right. Not until 1862 was any spe- 
cial law on the subject of trademarks enacted in England, and up to 
that time the only remedies against infringers in that country were 
the common-law remedies of damages and injunction. Not until 1875 
was any provision made by law in Great Britain for the registration 
of trademarks. 



The first suggestion of the desirability of the protection of trade- 
marks by statutory law which is of record in this country was con- 
tained in a petition presented to the Second Congress by Samuel Breck 
and others, of Boston, asking that they be given the exclusive right to 
use certain marks for designating the sailcloth of their manufacture, 
on which petition Thomas Jefferson, then Secretary of State, made the 
following report: 

December 9, 1791. 

The Secretary of State, to whom was referred by the House of Kepresentatives the 
petition of Samuel Breck and others, proprietors of a sail-cloth manufactory in Bos- 
ton, praying that they may have the exclusive privilege of using particular marks for 
designating the sail-cloth of their manufactory, has had the same under consideration, 
and thereupon 

Reports, That it would, in his opinion, contribute to fidelity in the execution of 
manufacturers to secure to every manufactory, an exclusive right to some mark on 
its wares proper to itself. 

That this should be done by general laws, extending equal right to every case to 
which the authority of the Legislature should be competent. 

That these cases are of divided jurisdiction: Manufactures made and consumed 
within a State being subject to State legislation, while those which are exported to 
foreign nations, or to another State, or into the Indian Territory, are alone within the 
legislation of the General Government. 

That it will, therefore, be reasonable for the General Government to provide in 
this behalf by law for those cases of manufacture generally, and those only which 
relate to commerce with foreign nations, and among the several States, and within 
the Indian Tribes. 

And that this may be done by permitting the owner of every manufactory to enter 
in the records of the court of the district wherein his manufactory is the name with 
which he chooses to mark or designate his wares, and rendering it penal in others to 
put the same mark to any other wares. (Jefferson's Complete Works, Washington, 
1854, vol. 7, 563; Am. State Papers, vol. 14, p. 48.) 

The report indicates very clearly that the question of the protection 
of trademarks was one which was wholly new to Jefferson. It also 
shows that with wonderful foresight he not only clearly grasped the 
importance of the question to the growing manufacturing industries of 
the country, but was fully satisfied that the provisions of the Consti- 
tution were ample to warrant Congress in passing laws which should 
provide in the interests of the citizens of the United States for the 
protection of trademarks used in interstate and foreign commerce. 
The essential features of the law he suggests — the requirement of notice 
of the claim of right to the mark by registering it with an officer of the 
Government and provision for the punishment of infringers of regis- 
tered marks — are to-day the essential features of the trademark laws 
of all foreign countries which have such laws, practically all countries 
which have any pretension to commercial importance. 



DiSSEifTIIvfG REPORT TRADEMARKS. &3 

DEYELOPMENT OF TRADEMARK LAW IN THE UNITED STATES. 

The commercial conditions of the time were not such as to create 
an}" general demand for such a law as was suggested in Jefferson\s 
report and it does not appear that any attempt was made to pass such 
a law. No bill on the subject appears to have been introduced in Con- 
gress until nearly three-quarters of a century later ^ and then rather 
for the purpose of carrying into effect the provisions of certain trea- 
ties with foreign nations than in I'^sponse to any demand from the 
manufacturing interests of the United States.^ That there was no gen- 
eral recognition of the importance of the protection of trademarks 
appears from the fact that not until 1837 was any controversy respect- 
ing the right to a trademark on articles of merchandise (Thomson v. 
Winchester, supreme court of Massachusetts, 1837, 19 Pick., 214; 
Cox Am. Trademark Cases, 7) brought before any court of record in 
the United States, and not until 18M (Taylor v. Carpenter, circuit 
court of the United States, district of Massachusetts, 18M, 3 Story, 
458; Cox Am. Trademark Cases 14), was any such case brought before 
a United States court. It is to be noted that in this latter case the suit 
was brought b}^ an English manufacturer for infringement of his trade- 
mark by citizens of the United States. 

These two cases were followed by one in each of the years 1845, 
1846, 1847, 1848, two in 1849, one in 1850, one in 1851, one in 1853, 
three in 1854, two in 1855, three in 1856, six in 1857, one in 1859, 
seven in 1860, one in 1861, two in 1862, one in 1863, one in 1864, four 
in 1865, seven in 1867, seven in 1868, four in 1869, and three in 1870, 
a total up to 1870 of sixty-two cases, all but six of which were in the 
State courts of the following States: In the courts of the State of New 
York, forty cases; of Massachusetts, two; of Rhode Island, two; of 
Pennsylvania, seven; of California, two; of Connecticut, two; of Mis- 
souri, one. 

Not until 1871 was any case involving the right to a trademark 
brought before the Supreme Court of the United States (Canal Co. v. 
Clark, 13 Wall., 311). 

The fact that it was not until many years after the adoption of the 
Constitution that the importance of the protection of trademarks 
began to be appreciated is clearly shown by the decision of the supreme 
court of New York in the case of Clark v. Clark, decided in 1857 (25 
Barb., 76; Cox Am. Trademark Cases, 206). In this decision the. 
court says: 

The law of trademarks is of recent origin and may be comprehended in the proposi- 
tion that a dealer "has a property in his trademark." The ownership is allowed 
to him, that he may have the exclusive benefit of the reputation which his skill has 
given to articles made by him, and that no other person may be able to sell to the 
public, as his, that which is not his. 

See also the case of Phalon y. Wright, decided in 1864 in the court 
of common pleas of the county of Philadelphia (5 Philadelphia, 464; 
Cox Am. Trademark Cases, 307), in which the court says: 

It is somewhat strange that in the State of Pennsylvania, whose people are so 
largely engaged in manufactures, the subject of "trademarks" should not have been 
more frequently presented to our courts for decision. 

The case of Colladay v. Baird, reported in fourth Phil. Rep. , 139, decided in this 
court, in which my brother Ludlow delivered an elaborate and well-considered opin- 
ion, seems to be the only reported decision in this State upon the subject. 

In New York the subject of trademarks has been frequently presented for judicial 
consideration, and in the decisions of the courts of that State and of the English tri- 

1 Appendix, Chap. XXV, p. 380, 2 Appendix, Chap. XXV, p. 382. 



94 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

bunals, with one or two from other States, we find the sources of the information 
required for the investigation of the case before us. 

It is well settled that a court of equity will exercise its power for the protection of 
the owner of a trademark in the exclusive emjoyment of that device or symbol 
chosen by him to designate his goods or manufactures, and to distinguish them from 
those of others. 

Every man has a right to the products of his own labor, and is entitled so to dis- 
tinguish them, that persons dealing in or purchasing his commodities may be readily 
able to recognize them as his. The maker may therefore either with or without the 
use of his name adopt a word, title, symbol, or figure to designate the ownership or 
manufacture of the goods. In the use of such "trademark" he is to be protected 
from the efforts of others who would take advantage of his enterprise or skill, and, 
by imitation, endeavor to impose upon the public and to deprive him of the just 
reward of his industry. 

The adoption of a trademark or device to indicate the manufacture or origin of a 
certain article does not give any right to the exclusive production of the article so 
marked. Any article of manufacture, unless it be protected by a patent, may be 
made and sold by any person. There is no such thing as an exclusive right to 
any particular branch of industry. The only restriction is that each party shall 
stand upon his own merits, and none shall be permitted, by the use of marks or sym- 
bols, to pretend that the goods offered by him are the products of another. (6 
Beav., 72; Perry v. Truefitt, Coffeen v. Brunton, 4 McLean, 516.) This rule has 
even been applied to cases where there was no intentional deception, as where the 
manufacturer of steel was prohibited from stamping upon his manufacture certain 
words which he supposed were descriptive of a particular quality of steel, but which 
were, in fact, the name of the original manufacturer, and indicated his ownership. 
(Millington v. Fox, 3 Myl. & Cr., 338.) 

And it was well said of the growth of the importance of the trade- 
mark by Judge Paxson in the case of Dixon Crucible Co. ^. Guggen- 
heim (3 Am. Law Times R. (St.), 288, and 2 Brewster, 321; Cox Am. 
Trademark Cases, 559), that — 

In a rude age, when manufacturers were few, and those of only useful and indis- 
pensable articles, trademarks were but little known and seldom, if ever, violated. 
It was when wealth and luxury increased, and manufactures multiplied accordingly, 
that the use and value of a trademark became distinctly recognized. In the present 
age (1870), with the vast extension of the manufacturing interest, the law upon this 
subject is of necessity frequently invoked; and it is settling down into a consistent 
theory. 

EARLY TRADEMARK LAWS OF THE STATES. 

While during the interval between the report made by Mr. Jefferson 
and the passage of the national trademark law, approved July 8, 1870, 
manjT- laws were passed b}^ the legislatures of the several States for the 
inspection of foods for men and animals and other products, and their 
obligatory marking, for the purpose of preventing fraud upon the 
public, it was not until 1845 that a law was passed in any one of the 
States of the United States for the protection of trademarks or othei 
marks by which goods may be distinguished on the market. 

The legislature of New York enacted a penal law in that year to 
"punish and prevent fraud in the use of false stamps and labels." 
(Laws of 1845, chap. 279.) This law was amended in 1850 (chap. 123), 
and repealed in 1862 (chap. 306) by a new law entitled "An act to pre- 
vent and punish fraud in the use of false stamps, brands, labels, and 
trademarks." The new law was amended in 1863 (chap. 209). A 
penal law relating to the marking of bottles used by manufacturers of 
mineral waters was passed in 1847. 

In 1847 a penal law was passed in Connecticut providing for the 
punishment of every person who shall use, forge, or counterfeit the 
individual stamp or label of any mechanic or manufacturer with intent 
to defraud another, etc. 



DISSENTING REPORT TRADEMARKS. 95 

In the same year a penal law was enacted in Pennsylvania " to pun- 
ish and prevent frauds in the use of false stamps and labels." (Law 
No. MO.) This was amended in 1855 (Law No. SSi), and finally incor- 
porated with slight changes into an act to consolidate the penal law. 
(I860, sees. 173, 171, 175.) Mineral- water manufacturers were pro- 
tected in their marks hj law in 1819 (Laws of 1819, pp. 524, 680) and 
the manufacturers of malt liquors in 1865 (Laws of 1865, p. 58). 

In 1850 a penal act (chap. 50) was passed in Massachusetts to punish 
the counterfeiting of a private label or trademark, etc. In 1853 
(chap. 156) a civil remedy by injunction and in 1859 (chap. 50) in dam- 
ages was given to owners of trademarks. In 1870 "An act to prevent 
fraud in the sale of watches" was passed. 

In Ohio a penal act was passed in 1859 "to prevent and punish 
fraud in the use of false stamps, brands, labels, or trademarks." 

In Iowa, in 1860, punishment was provided for the counterfeiting of 
any mark. 

In Michigan an act was approved February 6, 1863, "to prevent 
and punish the counterfeiting and fraudulent use of trademarks, 
labels, stamps, etc." 

In Oregon "An act to provide for the registration and protection of 
trademarks" was approved October 21, 1864. Registration was pro- 
vided for; also the forfeiture to the owner of the trademark of one- 
half of the infringing goods, or their value, for the first offense, and 
the whole for the second offense; and in 1864 the punishment of 
infringement was provided for in the Criminal Code (sec. 583.) 

In Nevada a penal law was passed in 1865. Registration was pro- 
vided for; fees, $20. Infringement was punished as a misdemeanor. 

In Kansas "An act to prevent the counterfeiting, changing, or 
destroying trademarks, devices, and brands" took effect May 31, 1866. 
It provided that the infringer should pay to the owner of the trade- 
mark not exceeding f 25 for each offense. 

In Maine a law was passed in 1866 (chap. 10) making infringers 
liable to damages and giving power to the supreme court to grant 
injunctions. 

In Missouri "An act to protect mechanics, manufacturers, and others 
in their trademarks" was approved March 6, 1866. It provided for 
registration, which should be notice. A second act with the same title 
was approved February 22, 1870, which provided for penalties for 
infringement. 

These are all the State statutes on the subject prior to the first 
national statute approved July 8, 1870. Eight States provided for the 
punishment of the improper intentional use of a trademark by fine or 
imprisonment; two provided both criminal and civil remedies, and two 
provided a civil remedy only. 

TRADEMARK TREATY WITH RUSSIA. 

In 1868 a treaty providing for the reciprocal protection of trade- 
marks was concluded by the United States with Russia.^ This was in 
the form of an article additional to the treaty of commerce and naviga- 
tion of December 6-18, 1832, and was concluded January 27, 1868. 
The substance of this article is as follows: 

The high contracting parties, desiring to secure complete and efficient protection 
to the manufacturing industry of their respective citizens and subjects, agree that 

^Appendix, Chap. XVIII, sec, 11, p. 335. 



96 REVISION OF STATUTES BELATING TO PATENTS, ETC. 

any counterfeiting in one of the two countries of the trademarks affixed in the other 
on merchandise, to show its origin and quality, shall be strictly prohibited and 
repressed, and shall give ground for an action of damages in favor of the injured 
party to be prosecuted in the courts of the country in which the counterfeit shall be 
proven. 

The trademarks in which the citizens or subjects of one of the two countries may 
wish to secure the right of property in the other must be lodged exclusively, to wit: 
The marks of citizens of the United States in the Department of Manufactures and 
Inland Commerce at St. Petersburg, and the marks of Russian subjects at the Patent 
Office in Washington. 

The importance of trademarks had been long recognized in Russia. 
A law as early as 1667 required manufacturers of certain kinds of 
goods to place certain marks on their goods, but did not require the 
use of individual marks. A law of 1774 required the use of individual 
marks, rather, however, as a means of distinguishing goods on which, 
under the law, a tax was due to the Government from those which were 
not liable to the tax, and to distinguish such goods from foreign goods 
in case of reimportation, than for any such purpose as that for which 
trademarks are now used. A little later, in 1778, an order was issued 
requiring manufacturers of paper to use distinguishing marks '4n 
order to determine more readily the quality of the paper and the hon- 
esty of the dealer." In 1830 a law was adopted establishing general 
rules for the protection of marks and doing away with the require- 
ments of the use of marks. Under this law, which remained in force 
until the present law was adopted in 1896, the owners of trademarks, 
in order to secure the advantage of its provisions, were required to 
register their marks in the department of commerce and manufactures. 
The infringement of registered marks was made a criminal offense, 
punishable by loss of civil rights and transportation. In short, the 
law was, in its essential features, such a law as was suggested in 
Jefferson's report in 1791, above referred to. 

TKADEMAKK TREATY WITH BELGIUM. 

Also in the year 1868, and also in the form of an addition to a 
treaty of commerce and navigation, that of 1858, was concluded by 
the United States under date of December 20, a similar treaty with 
Belgium.^ In that country, as in Russia, the importance of the pro- 
tection of trademarks had been long recognized, and the laws then and 
for many years in force provided for the registration of trademarks, 
at least those used in certain important lines of industry, and pro- 
vided for the punishment of infringers of trademarks by fine and 
imprisonment. The laws relating to the registration and protection 
of trademarks were, owing to the changes in the political status of 
Belgium during the present century, derived from various sources and 
were in consequence inharmonious and in many respects unsatis- 
factory. This condition of affairs was remedied by the adoption, in 
1879, of the present trademark law. Article 17 of this law, by its 
enumeration of the laws repealed, indicates not only the unsatisfactory 
condition of the laws, but from the date of these laws shows that the 
question of the protection of trademarks had been long recognized 
as, of great importance. This section is as follows (translation): 

Art. 17. The provisions actually in force respecting trademarks are repealed, 
especially the ordinance of the 23d Nivose, year IX, the law of the 22d Germinal, 
year XI, the decrees of February 20 and September 5, 1810, the royal ordinance of 

1 Appendix, Chap. XVIII, sec. 2, p. 326. 



BISSENTIIN-G REPORT TRADEMARKS. 9*? 

December 25, 1818, the ordinance of June 1, 1820, and the pro\dsions of article 50 
of the law of February 7, 1859, and of articles 184, 213, and 214 of the penal code 
in so far as they apply to such marks. 

THE TREATIES WITH RUSSIA AND BELGIIDI. 

That these treaties were within the constitutional power of the 
President under section 2 of Article II has never been questioned. 
Onh^ through such treaties could protection be secured for the rights 
of citizens of the United States to the exclusive use of their trade- 
marks in these countries — rights which are now recognized as essen- 
tial to the establishment of trade with these countries upon a perma- 
nent basis. In exchange for the assurance of such protection in these 
countries the President, with the advice and consent of the Senate, in 
accordance with the provisions of the Constitution, gave assurance to 
these nations that the rights of their subjects to the exclusive use of 
their trademarks should be protected in the United States. These 
treaties having been concluded in accordance with the provisions of 
the Constitution, it follows that it was incumbent upon Congress to 
provide, by law, for giving to them full force and effect in so far as 
they were not self -executing and to provide by appropriate legislation 
for the protection of the rights of citizens of the United States in 
so far as such rights might be in conflict with the claims of subjects 
of these nations. 

In both of these treaties it was expressly provided that citizens of 
the United States and subjects of these foreign nations should give 
notice of their claim to the exclusive property in their marks by reg- 
istration, the subjects of the foreign nations being required as condi- 
tional to protection for their marks to register them in the Patent 
Office at Washington, citizens of the United States being required to 
register the marks claimed by them in the Government offices pro- 
vided for that purpose in the several countries. 

As at the time these treaties were concluded there was no law 
authorizing the Patent Office to register trademarks, it was clearly 
necessary that legislation be enacted to provide for such registration, 
certainly so far as the registration of marks claimed by subjects of 
these countries as their property was concerned. 

These treaties not only stipulate that the marks of the subjects of 
these foreign nations should be admitted to registration and be given 
thereby the color of protection which the mere fact of registration 
necessarily implies, but also stipulate that any counterfeiting of 
such marks in the United States should be ' ' strictly prohibited and 
repressed," as well as that such counterfeiting should "give ground 
for an action of damages." 

Damages for infringement of trademarks were given under the 
common law, but under the common law infringements could not be 
'"strictly prohibited and repressed." Infringers could be enjoined 
from further infringement, but up to the issuance of the injunction 
the infringer incurred no penalty, could not be punished even by con- 
fiscation or destruction of the goods bearing the infringing mark. 
Continuance of the infringement after injunction issued was contempt 
of court for which the punishment was not alwa3^s adequate. Clearly 
a statutor}^ provision was needed if the treaty stipulations which 
provided that infringements should be ''strictly prohibited and 
repressed " were to be carried out in good faith. The foreign owners 



98 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

of trademarks entitled to the benefits of their treaties undoubtedly 
expected, and it is not unreasonable that they should expect, to have in 
the United States protection for their trademarks in some degree 
commensurate with the protection afforded by the laws of their own 
country to their trademarks, laws which "strictly prohibited and 
repressed " the infringement of trademarks by making such infringe- 
ment an offense punishable by fine and imprisonment, the benefit of 
which laws was assured under these treaties to United States citizens. 

PROPOSED LEGISLATION TO GIVE EFFECT TO TRADEMARK TREATIES. 

For the purpose of giving effect to the first of these treaties, that 
concluded with Russia, on April 7, 1869, Mr. Trumbull, from the Com- 
mittee of the Judiciary, reported a bill in the Senate of the United 
States as follows:^ 

A BILL to execute the provisions of a certain treaty between the United States and His Majesty the 
Emperor of all the Russias, concluded on the twenty-seventh day of January, anno Domini eighteen 
hundred and sixty-eight. 

Be it enacted by the Senate and the House of Representatives of the United States of 
America in Congress assembled, That any person who, with intent to defraud, shall 
falsely make, alter, forge, or counterfeit, in the United States, any trademark affixed 
in the dominions of His Majesty the Emperor of all the Russias, on any merchandise 
to show its origin or quality, which trademark shall have been lodged in the Patent 
Office of the United States in Washington, by any subject of the said Emperor, or 
any corporation existing in the said Emperor's dominions, or who shall in the United 
States utter and publish as true any such trademark, knowing the same to be false, 
altered, or forged, with intent to defraud any person, shall be deemed guilty of a 
misdemeanor, and, on conviction thereof, shall be punished by imprisonment at hard 
labor not more than three years, in the discretion of the court; and shall be liable 
to an action for damages in favor of the party injured thereby, to be prosecuted in 
any court having jurisdiction to hear and determine the same, (Bill S. 264, Forty- 
first Congress, first session.) 

This bill was indefinitely postponed in favor of a bill reported on 
the same da}" (April 7, 1869) by Mr. Sumner, from the Committee on 
Foreign Relations, which was as follows:^ 

A BILL to prevent the counterfeiting of foreign trade-marks protected by treaty stipulations. 

Whereas treaties have been concluded between the United States and certain for- 
eign powers, by which the contracting parties have mutually bound themselves to 
prevent their citizens or subjects from counterfeiting trademarks used by citizens or 
subjects of the other, and other similar treaties are proposed: Therefore, in order to 
carry into effect the stipulations which have been or may hereafter be made by the 
Government of the United States, 

Be it enacted by the Senate and House of Representatives of the United States of America 
in Congress assembled, Whenever any citizen or subject of a foreign power uses any 
trademark on merchandise to show its origin and quality, and has taken the steps 
prescribed by the treaty to secure the right of property in such trademark, no per- 
son anywhere within the United States shall counterfeit the same. 

Sec. 2. And be it further enacted, That whoever violates the provisions of the pre- 
vious section, or knowingly sells or exposes for sale any article having such counter- 
feited trademark, shall be liable to the injured party in an action at law or equity, 
to be prosecuted in any court of the United States having jurisdiction thereof. 
(Bill S. 265, Forty-first Congress, first session.) 

This bill on April 22, 1870, was passed by the Senate after a discus- 
sion in which the defects of the bill were clearly pointed out by Mr. 
Carpenter in the following language: 

I wish to call the attention of the chairman of the Committee on the Judiciary 
and also of the chairman of the Committee on Foreign Relations to the fact that the 
bill reported by the Committee on Foreign Relations seems to me to add nothing to 
the existing law. It simply says that whoever shall violate a trademark shall be 
liable to an action of damages. He is so without any statute. If any action what- 

' 1 Appendix, Chap. XXV, p. 382. 



DISSENTING REPORT TRADEMARKS. 99 

ever is needed on the part of Congress, it is to make the law more stringent than is 
the common law. If any man should use a trademark fraudulently that is a misde- 
meanor; that is obtaining money under false pretenses. It is not like the case of 
an infringement of a patent, which a man may do without knowledge that a patent 
exists; but if a man violates the trademark of another man and puts it on goods to 
sell for the purpose of defrauding, that is a misdemeanor and should be punished. 
The bill reported by the Committee on the Judiciary adds to the existing law, and I 
think the other bill does not.^ 

The bill was reported to the House of Representatives, but was not 
acted on. 

On February 7, 1870, Mr. Trumbull asked and, by unanimous con- 
sent, obtained leave to bring in the following bill, which was read 
twice, referred to the Committee on the Judiciary, and ordered to be 
printed:^ 

A BILL more effectually to provide for the execution of treaties for the protection of the owners of 

trade-marks. 

Be it enacted by the Senate and House of Representatives of the United States of America 
in Congress assembled, That the circuit courts of the United States, concurrently and 
not exclusive of the courts of the several States and Territories, shall have and exer- 
cise the same jurisdiction to protect and enforce the rights of subjects of foreign 
nations with which the United States have made or may hereafter make treaties or 
conventions for the reciprocal protection of trademarks, as if the said foreign subjects 
were citizens of the United States. (Bill S. 501, Forty-first Congress, first session.) 

This bill was indefinitely postponed by the Senate. 

LEGISLATION FOR THE PROTECTION OF DOMESTIC TRADEMARKS AGAINST 
INFRINGEMENT BY FOREIGNERS. 

^ On April 19, 1870, Mr. Banks, of Massachusetts, introduced in the 
House of Representatives a bill to prevent the importation from for- 
eign countries of articles fabricated in imitation of and bearing the 
trademarks of articles of American manufacture.^ This was referred 

to the Committee on Ways and Means and ordered printed, but does 
not appear to have been reported to the House. Its essential features 
are embodied in section 11 of the tariff act of 1897, as hereinafter noted. 
On April 21, 1870, Mr. Morrill, of Vermont, introduced in the Sen- 
ate a bill in relation to fraudulent trademarks upon foreign watches, 
which provided — ^ 

That no foreign watches or watch movements should be admitted to entry at 
the custom-houses in the United States, unless there shall be legibly and dis- 
tinctly engraved or stamped upon the works or movements the maker's name or 
distinguishing trade-mark, and in connection therewith, and as a part thereof, the 
name of the place and country where manufactured; but existing trademarks of 
foreign manufacturers of watches need not be changed if they distinctly show that 
the watch movements are of foreign production. If any watches or watch move- 
ments of foreign manufacture shall be offered for entry at any custom-house in the 
United States M'hich shall copy or simulate' the name or trade-mark of any domestic 
manufacturer, they are to be forfeited to the United States. 

This bill passed the Senate on May 3, 1870, was reported to the 
House of Representatives, and was referred to the Committee on 
Finance, but was not reported from that committee. Substantially the 
same bill passed both Houses as the act of March 3, 1871 (sec. 2496, 
Rev. Stat.), and with an amendment making its provisions applicable 
to "any other articles of foreign manufacture," as well as " watches, 
watch cases, watch movements, or parts of watch movements," thus 
making it cover substantially what was intended to be covered by the 
biU introduced by Mr. Banks, above referred to, was reenacted in 1883 
as a part of the act of March 3 of that year. 

1 Appendix, Chap. XXV, p. 383. » Appendix, Chap. XXV, p. 386. 



100 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

In slightly modified form the same provision respecting articles of 
imported merchandise was reenacted as section 7 of the act of October 
1, 1890, again as section 6 of the act of August 27, 1894, and yet again 
as section 11 of the act of July 2-1, 1897. This law as it now stands is 
as follows: 

Sec. 11. That no article of imported merchandise which shall copy or simulate the 
name or trade-mark of any domestic manufacture or manufacturer, or which shall 
bear a name or mark which is calculated to induce the public to believe that the 
article is manufactured in the United States, shall be admitted to entry at any custom- 
house of the United States. And in order to aid the otficers of the customs in enforc- 
ing this prohibition, any domestic manufacturer who has adopted trade-marks may 
require his name and residence and a description of his trade-marks to be recorded 
in books which shall be kept for that purpose in the Department of the Treasury, 
under such regulations as the Secretary of the Treasury shall prescribe, and may fur- 
nish to the Department facsimiles of such trade-marks, and thereupon the Secretary 
of the Treasury shall cause one or more copies of the same to be transmitted to each 
collector or other proper officer of the customs. (S. T. D. (1897), p. 669.) 

It is to be noted that this law provides for the protection of owners 
of trademarks against interference with their rights by infringers 
located in foreign countries and against would-be infringers located in 
this country in so far as importation b}^ them of goods manufactured 
in a foreign country and bearing the infringing mark, but does not 
give the same protection to the subjects or citizens of any foreign 
country. 

It was evident from the introduction of so many bills having refer- 
ence to the protection of trademarks, both foreign and domestic, that, 
at least in some lines of manufacture, American manufacturers had 
begun to feel the need of some protection for their trademarks 
against infringers located in foreign countries. At that time (1870) 
the question of a much-needed revision of the patent and copyright 
laws was before Congress, a bill for the revision of such laws having 
been introduced in the House of Representatives by Mr. Jenckes, of 
Rhode Island, from the Committee on Patents, on April 7. This bill 
having been recommitted, the Committee on Patents again reported 
it with certain sections added, providing for the registration and pro- 
tection of trademarks. These sections (72 to 84, inclusive), with some 
amendments, were adopted and were subsequently referred to as the 
trademark law of 1870 (sees. 4937-4947, Rev. Stat.)^ 

It is clear from the discussions of these sections of the bill^ that it 
was supposed that the power of Congress to provide for the registra- 
tion and protection of trademarks was derived from the clause of 
section 8 of Article I of the Constitution, which provides for the 
promotion of "the progress of Science and Useful Arts by securing 
for limited Times to Authors and Inventors the exclusive Right to 
their Respective Writings and Discoveries." Nowhere in the discus- 
sion is found any reference to the clause of section 8, which gives 
Congress the power "to regulate Commerce with foreign Nations 
and among the several States and with the Indian Tribes." So far as 
appears from the discussion of the bill, trademarks were regarded as 
analogous to patents and copyrights and their relation and importance 
to commerce appear to have been little understood. The act per- 
mitted the registration of trademarks by person or firms domiciled in 
the United States who were entitled to their exclusive use or who 
intended to adopt and use them, without limitation to the kind of com- 

^xippendix, Chap. XXV, p. 398. 



DISSENTING REPORT TRADEMARKS. 101 

merce in which they were used or intended to be used, and while the 
act so far as the protection to be given to registered trademarks added 
practically nothing to the existing law beyond giving a kind of gov- 
ernmental sanction to the use of trademarks, a step toward a provision 
for their adequate protection, it provided for giving this sanction 
to trademarks used in commerce within a State, as well as those used 
in such commerce as, under the Constitution, was within the power of 
Congress to regulate. 

Under this act and notwithstanding that it added little to the exist 
ing law so far as protection of trademarks was concerned, a consider- 
able number of trade-marks were registered, 121 in 1870, 486 in 
1871, 491 in 1872, 493 in 1873, 559 in 1874, 1,136 in 1875, and 959 in 
1876. Previous to the passage of this law, 17 marks of foreigners 
entitled to protection under the provisions of the treaties with Russia 
and Belgium, above referred to, had been deposited in the Patent 
Office. 

TRADEMARK CONVENTION WITH FRANCE. 

Subsequent to the introduction of the first of the above bills regard- 
ing the protection of trademarks, introduced April 9, 1869, by Mr. 
Trumbull, a convention concerning trademarks was concluded under 
date of April 16, 1869, with France.^ The substance of this convention 
is as follows: 

Article I. Every reproduction in one of the two countries of trademarks affixed 
in the other to certain merchandise to prove its origin and quahty is forbidden, and 
shall give ground for an action for damages in favor of the injured party, to be pros- 
ecuted in the courts of the country in which the counterfeit shall be proven, just as 
if the plaintiff were a subject or citizen of that country. 

The exclusive right to use a trademark for the benefit of citizens of the United 
States in France, or of French subjects in the territory of the United States, can not 
exist for a longer period than that fixed by the law of the country for its own 
citizens. 

If the trademark has become public property in the country of its origin, it shall 
be equally free to all in the other country. 

Art. II. If the owners of trademarks, residing in either of the two countries, 
wish to secure their rights in the other country, they must deposit duplicate copies 
of those marks in the Patent Office at Washington, and in the clerk's office of the 
Tribunal of Commerce of the Seine, at Paris. 

TRADEMARK CONVENTIONS WITH OTHER FOREIGN NATIONS. 

Subsequent to the passage of the act of 1870, under date of Novem- 
ber 25, 1871, a trademark convention, practically the same in terms 
with that concluded with France, was concluded with Austria-Hungary.^ 
December 11, 1871, a similar convention was concluded with Germany. 
March 28, 1874, a declaration respecting previous treaty stipulations 
in regard to trademarks with Russia was signed.^ March 5, 1875, a 
new treaty of commerce and navigation was concluded with Belgium,* 
containing as article 15 a restatement of the stipulation regarding 
the reciprocal protection of trademarks contained in the additional 
article concluded in 1868. 

THE TRADE -MARK LAW OF 1876. 

On April 16, 1876, Mr. Conkling introduced in the Senate a bill 
entitled "A bill to punish the counterfeiting of trademark goods 

^Appendix, Chap. XVIII, sec. 5, p. 330. ^^ppendix. Chap. XVIII, sec. 11, p. 335. 
^Appendix, Chap. XVIII, sec. 1, p. 325. ^Appendix, Chap. XVIII, sec. 2, p. 326. 



102 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

and the sale or dealing in of counterfeit trademark goods." This 
bill having passed the Senate, was reported to the House of Repre- 
sentatives. In reporting this bill from the Committee on Patents, 
to whom it had been referred, Mr. Sampson, of Iowa, said:^ 

It is generally conceded that there is not at present sufficient protection to trade- 
marks. The public generally, the honest manufacturers, and honest dealers through- 
out the country are being constantly swindled by counterfeit trade-marks. The law 
of 1870, providing a general system for the registration of trade-marks and designed 
to afford better protection by giving right of action in United States courts to recover 
damages for counterfeiting and providing the remedy by enjoining counterfeiters, 
has not proved sufficient. Worthless parties engaged in such dishonest practices are 
not prevented by civil actions. A judgment for damages has no terrors for them. 
If enjoined, some relatives soon own the goods and the business goes on. The plain- 
tiff in such action (the measure of damages being the profit) has to depend mainly 
on the testimony and books of the defendant; and it is found generally that he who 
will counterfeit will testify falsely to avoid the consequences. Thus the action for 
damages amounts to but little. 

Nearly 400 of the leading manufacturers, merchants, and dealers of New York, 
Boston, and Philadelphia have petitioned Congress very earnestly at this session to 
enact such a law as that contained in this Senate bill; and they state their reasons 
in this forcible language: 

"The use of trade-marks on every species of merchandise and manufactures, both 
foreign and domestic, has greatly increased with the expansion of modern trade and 
commerce, and has become a powerful interest throughout the United States of 
America. 

''The nefarious but lucrative business of pirating or counterfeiting genuine trade- 
mark goods has too long flourished unchecked to the incalculable injury of every 
consumer, of every honest merchant, manufacturer, and trader, and has extensively 
multiplied costly and tedious litigation. 

' ' No United States statute yet exists providing penal remedies to punish the coun- 
terfeiting of trade-mark goods or the sale or dealing in the same. The evils and 
injuries to long-suffering commercial and manufacturing interests consequent upon 
this omission imperatively demand prompt relief and a speedy application of search- 
ing remedies. 

"We therefore respectfully petition for relief, and request that Senate bill No. 846, 
introduced into the Senate on the 18th of May, 1876, entitled 'A bill to punish the 
counterfeiting of trade-mark goods and the sale or dealing in of counterfeit trade- 
mark goods,' may be made law at this session of Congress." 

This bill as amended, having passed both Houses, was approved 
August 14, 1876.' 

THE TRADEMARK LAW AS DEFINED BY THE ACTS OF 1870 AND 1876. 

This act, whatever may be its defects, supplied what was lacking in 
the act of 1870; that is, provided a protection for trademarks beyond 
that given by the common law as understood and applied by the courts, 
by making the willful counterfeiting of registered trademarks a mis- 
demeanor punishable by fine or imprisonment. The trademark law 
as it then stood, taking the two acts, that of 1870 and that of 1876 
together, was in its essential features the law suggested by Jefferson 
in his report in 1791, differing from the law then suggested in one 
important particular only, but one which was of such importance as to 
render it impossible to uphold the law as valid and constitutional; that 
is, in not being limited in its application to the registration and pro- 
tection of trademarks used in commerce which Congress, under the 
Constitution, had the power to regulate. In these essential features, 
making full protection conditional upon registration of the mark, and 
making the infringement of a registered mark a misdemeanor punish- 
able by fine or imprisonment, the trademark law as it then stood 

1 Appendix, Chap. XXV, p. 404. ^ Appendix, Chap. XXV, p. 412, 



I 



DISSENTING REPORT TRADEMARKS. 103 

corresponded with the trademark laws of the foreign countries with 
which the United States had entered into treaty agreements respecting 
the protection of trademarks. 

TRADEMARK CONVENTIONS WITH FOREIGN NATIONS. 

Subsequent to the passage of the law of 1876 a declaration for the 
reciprocal protection of marks of manufacture and trade was concluded 
with Great Britain, October 24, 1877,^ and on September 24, 1878, an 
agreement for the reciprocal protection of marks of manufacture and 
trade was concluded with Brazil.^ These were substantially indentical 
in form and contained substantially the same stipulations that were con- 
tained in the treaties and conventions with other foreign countries. 

THE DECISION OF THE SUPREME COURT IN THE TRADEMARK CASES. 

Criminal prosecutions being had under the statutes of 1870 and 1876 
in the southern district of New York and the southern district of Ohio, 
and a difference of opinion having been certified to the Supreme Court 
on the question whether these acts of Congress on the subject of trade- 
marks were founded on any rightful authority in the Constitution of 
the United States, the cases came before the court for review at the 
October term of 1879. (Trademark Cases, 100 U. S. , 82.) ' The court 
showed with admirable clearness that because of the distinction between 
patents and copyrights and trademarks, pointed out in the decision, 
the power of Congress to enact the law could not be derived fix)m that 
paragraph of Article I, section 8, of the Constitution which relates to 
authors and inventors, since the right of ownership in trademarks is 
created b}^ adoption and not by authorship or invention. Neither 
could the law be supported by the commerce clause of the same arti- 
cle and section of the Constitution, because it was not limited to com- 
merce among the States, but, on the contrary, was extended to trade- 
marks generally, embracing marks used wholly within a State. The 
court held that, because the act usurped jurisdiction over trademarks 
used wholly within a State, it was so far void that the court could not 
separate the good from the bad without creating a new law, different 
perhaps from that which Congress would have passed, and that there- 
fore the whole law must fall. The court, however, said: 

The question, therefore, whether the trade-raark bears such a relation to commerce 
in general terms as to bring it within Congressional control, when used or applied to 
the classes of commerce which fall within that control, is one which, in the present 
case, we propose to leave undecided. (100 U. S., 95.) 

The court further said: 

In what we have here said we wish to be understood as leaving untouched the 
whole question of the treaty-making power over trade-marks, and of the duty of 
Congress to pass any laws necessary to carry treaties into effect. (Ibid., 99.^. 

EFFECT OF THE DECISION OF THE SUPREME COURT. 

This decision of the Supreme Court caused great anxiety to trade 
mark owners, who sent many petitions to Congress; and great public- 
ity was given to the subject by the press of the country. 

1 Appendix, Chap. XVIII, sec. 7, p. 331. 

2 Appendix, Chap. XVIII, sec. 8, p. 332, 
3 Appendix, Chap. XXV, p. 413. 

S. Doc. 20 8* 



104 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

The scope of the decision was not understood, and within a few days 
after it was handed down, Mr. McCoid, of Iowa, introduced a joint 
resolution in the House proposing the following amendment to the 
Constitution : ^ 

Congress, for promotion of trade and manufacture, and to carry into effect inter- 
national treaties, shall have power to grant, protect, and regulate the exclusive right 
to adopt and use trade-marks. 

The resolution was referred to the Committee on Manufactures, 
which reported it favorably December 11, 1879. A part of the report 
is as follows: 

The business men of the world have awakened to the fact that manufacture and 
trade require national and international control and protection of genuine commer- 
cial signatures to identify and distinguish property made and marketed by cosmo- 
politan tradesmen. 

On December 9, 1879, Mr. Armfield, of North Carolina, introduced 
in the House ''A bill to authorize the registration of trademarks,"^ 
which substituted for the first clause of the act of 1870, which made no 
distinction as to the use of the trademarks registered, the following: 

Owners of trademarks used in commerce with foreign nations, or among the 
several States, or with the Indian tribes, provided such owners shall be domiciled 
in the United States, or located in any foreign country which, by treaty, convention, 
or law, affords similar privileges to the citizens of the United States, may obtain regis- 
tration of such trade-marks by complying with the following requirements. 

The bill, as drawn, provided for a trademark bureau. It was 
referred to the Committee on Commerce, but does not appear to have 
ever been reported by the committee. 

THE TRADEMARK ACT OF 1881. 

On March 12, 1880, Mr. Hammond, from the Committee on the Judi- 
ciary, reported a bill as a substitute for the preceding resolution and 
bill. It was in substantially the form of the present law.^ 

The report accompanying the bill says : * 

The bill seeks to reenact substantially the trade-mark legislation of 1870 (Rev. Stat., 
sees. 4937-4947, inclusive), save that it is confined to foreign and interstate com- 
merce. Its theory is that, by thus separating them from interstate commerce, the 
objections of the Supreme Court as to constitutionality will be removed. 

The bill passed the House April 27, 1880, was referred to the Com- 
mittee on the Judiciary of the Senate April 29, 1880, and passed the 
Senate and was thereafter approved March 3, 1881.® 

B}^ an act approved August 5, 1882,® which was in the nature of an 
amendment to the act of 1881, provision was made for the registra- 
tion "of any lawful trademark rightfully used by the applicant in 
foreign commerce or commerce with Indian tribes at the time of the 
passage of said act," notwithstanding any provision of the act which 
would otherwise prevent its registration. 

This law has been in some wa}^ referred to in the following cases 
without its constitutionality being questioned: Menendez "v. Holt (128 
U. S., 514, 516), Ryder v. Holt (128 U. S., 525), Corbin'y. Gould (133 
U. S., 308), South Carolina v. Seymour (153 U. S., 353, Luyties v. 
HoUender (21 Fed. Rep. , 281), Schumacher v. Sch wencke (26 Fed. Rep. , 

1 Appendix, Chap. XXV, p. 417. * Appendix, Chap. XXV, p. 428. 

2 Appendix, Chap. XXV, p. 426. ^ Appendix, Chap. XXV, p. 491. 

3 Appendix, Chap. XXV, pp. 432, 491. ^ Appendix, Chap. XXV, p. 499. 



DISSENTING REPORT TRADEMARKS. 105 

818), Pratt M. Co. v. Astral O. Co. (27 Fed. Rep., 492, 493), Luyties 
V. Hollender (30 Fed. Rep., 632), United States v. Koch (40 Fed. Rep., 
250), Hiram Holt Co. v. Wadsworth (41 Fed. Rep., 34, 36), Graveley 
V. Graveley (42 Fed. Rep., 265), L. H. Harris D. Co. v. Stucky (46 
Fed. Rep., 624), Brower v. Boulton (53 Fed. Rep., 389), Brower -?;. 
Boulton (58 Fed. Rep., 888, 890), Kohler M. Co. v. Beeshore (59 Fed. 
Rep., 572,575), Jaros Hygienic Underwear Co. v. Fleece Hygienic 
Underwear Co. (65 Fed. Rep., 424), Burt v. Smith (71 Fed. Rep., 161), 
Saxlehner v. Eisner & Mendelson Co. (88 Fed. Rep., 61). 

The number of registrations made under this law by years is as fol- 
lows: For 1881, 834; for 1882, 947; for 1883, 902; for 1884, 1,021; 
for 1885, 1,067; for 1886, 1,029; for 1887, 1,133; for 1888, 1,059; for 
1889,1,229; for 1890, 1,415; for 1891, 1,782; for 1892, 1,737; for 1893, 
1,677; for 1894, 1,806; for 1895, 1,829; for 1896, 1,813; for 1897, 1,671; 
for 1898, 1,238; for 1899, 1,649. 

TRADEMARK ARRANGEMENTS WITH FOREIGN NATIONS. 

Since the approval of the trademark act of 1881, the following 
diplomatic arrangements respecting the reciprocal protection of trade- 
marks have been entered into between the United States and foreign 
nations: A treaty with Serbia for facilitating and developing commer- 
cial relations, concluded October 2-14, 1881, in which article 12 pro- 
vides for the reciprocal protection of trademarks ; ^ a declaration with 
Italy for the reciprocal protection of marks of manufacture and trade, 
concluded June 1, 1882;^ a convention with Spain for securing recip- 
rocal protection for trademarks and manufactured articles, concluded 
June 19, 1882;^ a convention with Belgium for securing reciprocal pro- 
tection for trademarks and trade labels, concluded April 7, 1884;* a 
convention with Denmark for the reciprocal protection of trademarks 
and trade labels, concluded June 15, 1892;^ a treaty of commerce and 
navigation with Japan, concluded November 22, 1894,® of which article 
16 relates to the protection of trademarks, and a convention with the 
same country securing immediate reciprocal protection for trademarks, 
concluded January 13, 1897.® In addition, diplomatic notes with 
regard to the reciprocal protection of trademarks were exchanged 
with Netherlands under dates of February 10 and 16, 1883,^ and with 
Switzerland under dates of April 27 and May 14, 1883.^ 

The United States under date of May 30, 1887, adhered to the Inter- 
national Convention for the Protection of Industrial Property con- 
cluded between certain countries at Paris, March 20, 1883,^ by such 
adhesion entering into treaty agreements for the reciprocal protection 
of trademarks with the following countries: Belgium, Brazil, Domin- 
ican Republic, France with Algeria and the French colonies, Great 
Britain, Italy, Netherlands, Norway, Portugal, Servia, Spain, Sweden, 
Switzerland, and Tunis. Since the adhesion of the United States, Den- 
mark with the Faroe Islands, New Zealand, and Queensland, Japan, 
the Dutch East Indies, Surinam, and Curasao have adhered to this con- 
vention, and its provisions are therefore effective between the United 
States and these countries also. 

1 Appendix, Chap. XVIII, sec. 12, p. 336. ^ Appendix, Chap. XVIII, sec. 9, p. 332. 

2 Appendix, Chap. XVIII, sec. 8, p. 332. ^ Appendix, Chap. XVIII, sec. 10, p. 334. 

3 Appendix, Chap. XVIII, sec. 13, p. 337. ^ Appendix, Chap. XVIII, sec. 14, p. 337. 
* Appendix, Chap. XVIII, sec. 2, p. 326. » Appendix, Chap. II, sec. 1, p. 146. 

5 Appendix, Chap. XVIII, sec. 4, p. 329. 



106 REVISION OF STATUTES RELATING TO PATENTS, ETC. 
PRESENT TRADEMARK LAWS OF THE STATES. 

Since the approval of the act of 1881 many of the separate States of 
the United States have adopted laws providing for the registration 
and protection of trademarks or have amended such laws previously 
adopted. The State laws, including those adopted prior to 1881, are 
thus given in a recent publication:^ 

The following States provide by law for the registration of trademarks by any per- 
son, or association, or union of workingmen, and for the punishment by fine or 
imprisonment of infringers: 

Delaware, act of March 29, 1893. 

Georgia, act of December 20, 1893. 

Idaho, act of March 12, 1897. 

Illinois, act of June 13, 1895. 

Indiana, acts of March 6, 1891, and March 8, 1897. 

Iowa,_ act of March 26, 1892. 

Louisiana, act of July 8, 1898. 

Maine, act of March 28, 1893. 

Maryland, act of April 4, 1892. 

Massachusetts, act of June 4, 1895. 

Michigan, act of May 24, 1895. 

Minnesota, act of February 23, 1895. 

Missouri, act of March 20, 1893. 

Montana, Sander's Penal Code, 1895. 

New Hampshire, act of March 13, 1895. 

New Jersey, act of March 15, 1898. 

Ohio, acts of March 30, 1892, and May 1, 1894; Revised Statutes, 1890. 

Oklahoma, act of March 11, 1897. 

Tennessee, act of February 3, 1897. 

Utah, act of March 8, 1894. 

Wisconsin, act of April 9, 1895. 

The following States provide by law for the registration of trademarks by any per- 
son and for the punishment of infringers by fine or imprisonment, but do not 
expressly provide by law for registration by associations or unions: 

Arkansas, act of March 31, 1883. 

Cahfornia, act of March 12, 1885; chapter 157 of Laws of 1897. 

Colorado, Hill's Annotated Statutes, 1891. 

Connecticut, Statutes of 1888, chapter 93 of Laws of 1895. 

Nevada, Statutes of 1885. 

North Dakota, act of March 9, 1891. 

Oregon, Hill's Annotated Laws, 1892. 

Washington, acts of February 21, 1891, and March 20, 1895. 

West Virginia, Code of 1897, act of 1882. 

The following States provide by law for the registration of trademarks only by 
associations or unions of workmgmen and for the punishment of infringers by fine or 
imprisonment: 

Kansas, act of March 11, 1891. 

Kentucky, acts of April 16, 1892, and March 8, 1894. 

Nebraska, Laws of 1891, chapter 15. 

Pennsylvania, act of May 21, 1895. 

South Dakota, act of March 7, 1890. 

The following States provide by law for the registration of trademarks only by 
manufacturers or dealers in beverages in bottles, etc., and for the punishment of 
persons who make fraudulent use of the bottles, etc., so marked: 

Alabama, act of February 14, 1891. 

New York, act of May 27, 1894, R. 

Rhode Island, act of May 13, 1892. 

Virginia, act of February 17, 1890, and February 12, 1892. 

PKOVISIONS OF THE TRADEMARK ACT OF 1881 — THE COMMON LAW OF 

TRADEMARKS. 

The act of 1881 ^ provides for the registration of trademarks used in 
commerce with foreign nations or with the Indian tribes and by pro- 

' Appendix, Chap. XIX, p. 340. 2 Appendix, Chap. XXV, p. 491. 



DISSENTING REPORT TRADEMARKS. 107 

viding that the owners of trademarks domiciled in any foreign country 
which by treaty, convention, or law affords similar privileges to citi- 
zens of the United States may register their marks gives effect to the 
treaty obligations which the United States has entered into with for- 
eign countries so far as the registration of trademarks is concerned. 
It also provides that the registration of a trademark shall be prima 
facie evidence of ownership. In other respects it practically does 
nothing more than give effect to the common law of trademarks as it 
existed at the time of its enactment, created by the courts of Great 
Britain and the United States, indefinite and indistinct as a law must 
be which has to be ascertained from a mass of decisions rendered by 
many different courts, man}^ of them contradictory in their dicta on the 
question and all of them concerned with doing justice in the particular 
case before them rather than with legislating into existence a distinct 
anji definite law. The following statement, taken from the decision of 
Judge Potter in the case of Gillott v. Esterbrook in 1864 (Cox American 
Trademark Cases, 340), may be accepted as indicating the difficulty 
in ascertaining the law with respect to trademarks, the decision being 
subsequently affirmed on appeal by the supreme court of New York. 
(47 Barb., 455; Cox Am. Trademark Cases, 363.) This statement is as 
follows: 

The law in relation to trademarks in late years has been much discussed in our 
courts, still, however, leaving many questions unsettled, so that what is proper to be 
done in cases of this kind depends more or less upon the circumstances that attend 
them. The questions presented in the adjudicated cases have been variant in their 
features, and partially so conflicting that we are compelled to look at a few general 
principles that seem to be settled, and then resort to analogies, in order to determine 
from them what should be held in the particular case, and then deal with it accord- 
ing to the nature of its peculiar circumstances. 

See also the case of Dixon Crucible Company v. Guggenheimer, 
above referred to. 

DECISIONS FROM WHICH THE COMMON LAW OF TRADEMAKKS IS DETER- 
MINED. 

From a consideration of a few of the early decisions in trademark 
cases the difficulty in determining even the fundamental principles of 
the so-called common law of trademarks will be apparent. 

In the case of Blanchard v. Hill, above referred to,^ decided by Lord 
Hardwicke in 1Y42, a motion having been made on behalf of the plain- 
tifi' for an injunction to restrain the defendants from making use of a 
trademark which had been appropriated by the plaintiff, the learned 
chancellor said: 

I do not know any instance of granting an injunction here to restrain one trader 
from using the same mark with another, and I think it would be of mischievous 
consequence to do it. 

This decision, which, in effect, held that there could be no right of 
property in a trademark, stood as determining the law of trademarks 
for nearly a hundred years. Prior to that time the owner of a trade- 
mark was compelled to establish and vindicate his right at law. His 
right to his mark was not protected by a court of equity. 

Not until the case of Millington v. Fox, above referred to,^ was 
decided in 1838, was it held by any court in Great Britain or the 
United States that there could be a property right in a trademark. 
And it should be said that the doctrine enunciated in that decision 

1 Page 91 . 2 Page 9i. "^ 



108 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

was not at once universally accepted, the Master of the Rolls in 1842, 
in the case of Perry v. Trufitt (6 Beav., M)^ stating that it did not 
seem to him that a man could acquire a propert}^ merel}^ in a name or 
mark, and, commenting on the case of Millington ^^ Fox, said that " I 
am not aware that an}^ previous case carried the principle to that 
extent." Judge Robertson, of the superior court of the city of New 
York, in his decision in the case of Corwin v. Daly (7 Bos. , 222, Cox 
Am. Trade-mark Cases, 265, 1860), states that this doctrine was 
repudiated in Crawsha}^ v. Thompson (4 Man. & Gr. , 357, Cox Manual, 
72, 1842), and even asserts that it will be found on examination that 
no such doctrine was sustained in the case of Millington q). Fox. The 
learned judge quotes from the decision of the yice-Chancellor of Eng- 
land in Collins Co. v. Cowen (3 Kay & J., 428, Cox Manual, 152, 1857), 
the assertion that "There is no such thing as property in a trademark 
as an abstract name," and says that "This principle will be found not to 
have been swerved from in any case." The case of Millington ^^ Fox 
is, however, generall}^ taken to have been the case in which the now 
universally accepted doctrine of a property right in a trademark was 
for the first time announced. Certainly that doctrine was not 
announced in any prior decision. The change in the attitude of the 
courts toward trademarks and the desirability of statute law on the 
subject is well stated by the supreme court of California in the case of 
Derringer v. Plate (29 Cal., 292, Cox Am. Trademark Cases, 324, 
1865), in the following language: 

It was at one time thought that no man could acquire a right to a particular trade- 
mark (Blanchard v. Hill, 2 Atk., 284), but as the true interests of manufacturers and 
commerce were more fully developed and appreciated the right of property in trade- 
marks was recognized, and the doctrine has been uniform for many years that the 
manufacturer or merchant does possess an exclusive property in the trademark 
adopted and used by him. The right of property does not in any manner depend 
for its inceptive existence or support upon statuatory law, though its enjoyment may 
be better secured and guarded, and infringements upon the rights of the proprietor 
may be more effectually prevented or redressed by the aid of the statute than at com- 
mon law. Its exercise may be limited or controlled by statute, as in case of other 
property, but the title to the good will of a trade, which it in some respects resem- 
bles, the right of property in a trademark accrues without the aid of the statutes. 

And if the decisions respecting the fundamental proposition on which 
the law of trademarks rests are contradictory, it is to be expected that 
the decisions on other questions would be also contradictor^^ and con- 
flicting. Such is the case. On perhaps no question have the decisions 
been more conflicting than on the question of what may constitute a 
trademark. As late as 1869, in the case of Ferguson v. Davol Mills 
(2 Brewster, 314, Cox Am. Trademark Cases, 516), it was not only 
stated that ' ' the simplest case of a trademark is the name and address 
of the claimant," but it was held that " it is absolutely requisite that 
a device or symbol should perform the office of a finger board; should 
indicate the name and address of the manufacturer to invest it with the 
attributes and entitle it to the protection of a trademark." This 
decision, though unf ortunatelj^ followed in a number of cases, is to-day 
recognized as radically and absolutely incorrect, as is clear from the 
decision of the Supreme Court in Manufacturing Co. v. Trainer (101 
U. S., 51), in which it is said that "a trade-mark may consist of a 
name, symbol, figure, letter, form, or device." The mere name and 
address of a person is so far recognized as not in itself a trademark 
in the technical sense that it is expressly excluded from registration 
as such in the United States by the trademark act of March 3, 1881, 



DISSENTING EEPOET TEADEMARK8. 109 

and in Great Britain by the law of 1875, as well as by the law at 
present in force. And it is to-day well settled that neither the name 
nor address is requisite to the validity of a trademark. On many 
other questions the decisions are equally conflicting. 

CLASSES OF TRADEMARK CASES — UNFAIR COMPETITION. 

From a consideration of the cases involving the right to use a trade- 
mark which have been brought before the courts, it is clear that there 
are two clearly defined classes of these cases; first, cases of unfair com- 
petition; and, second, cases in which the question of the property right 
in the mark is involved between two persons who have independently 
adopted and used the same mark. The first class of cases presents 
little difficulty. It is obvious that the counterfeiting or imitation of a 
mark known to be the distinguishing mark borne by the goods of a 
particular trader is attended b}^ injurious consequences of a serious 
character from two points of view. The rightful owner of the mark 
suffers by the diminished sale of his goods, and incurs also the risk of 
serious injury to the reputation of his goods, since the goods placed 
upon the market under a false mark are almost invariably inferior in 
quality to those sold by the rightful owner. And the purchaser is 
injured as well, for the public is induced by the false mark to believe 
that it is purchasing something different from what it actually receives. 

The deliberate and willful imitation of the mark known to belong 
to another is so plainly a fraud upon his rights that from ver}^ early 
times the courts have not hesitated to protect the rightful owner 
against those who knowingly counterfeited or imitated his mark. It 
does not, however, appear, as has been above stated, that the right 
of the owner of the mark to the protection of the courts of equity 
was recognized until long after his right to the protection of the law 
courts had been recognized. But it is clear that the remedies which 
could be afforded by even the courts of equity were far from adequate 
to effectually prevent or redress the infringement upon the rights of 
the proprietor of a trademark. An award of damages against a 
wiUful infringer is clearly an inadequate punishment of the fraud of 
which he has been guilty, and is not sufficient to deter others from 
infringement. An injunction against further infringement is not 
greatty feared by those who deliberately counterfeit another's mark, 
and at best is effective only as to the future and as to the persons 
specially named in it. The willful counterfeiter of another's mark is 
entitled to no better treatment than the criminal who takes the goods 
of another. This is now widely recognized, as is evident from the 
fact that in all foreign countries which have trademark laws, and 
indeed in nearly all of the States of the United States, the willful 
infringement of a trademark is by express provision of statute law 
made an offense punishable by fine and imprisonment. Yet under the 
common law of trademarks, as it is understood to-day by the United 
States courts, the owner of a trademark is afforded no protection 
against infringers, save that of damages and injunction. 

To entitle the user of a mark to such remedies as may be afforded 
under the common law, it is, generally speaking, necessary only to 
show that the infringer has knowingly copied or imitated his mark, 
whatever that mark may be. It is of comparatively little importance 
in what the mark may consist, whether it be a trademark in the tech- 



110 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

nical sense or the mere dress and appearance of an article as put upon 
the market, a word which primarily was clearly descriptive, or even 
the name of the manufacturer or dealer. The question is as to the 
intent of the infringer, and if the circumstances show that the intent 
was fraudulent, the rightful user of the mark is entitled to damages 
and injunction. 

It is clear that cases of this class, cases of unfair competition, are 
reached by the common law of trademarks, but it is equally clear 
that the common-law remedies are insufficient to adequately protect 
the rightful owner of the mark. 

CASES INVOLVING THE PROPERTY RIGHT TO A TRADEMARK. 

To the other class of cases, and such cases often arise and are usually 
of even more importance than cases of unfair competition, belong 
those in which it being found that two manufacturers or dealers have 
adopted and used the same or similar marks, each without knowledge 
of use of the mark by the other, suit is brought by the party claiming 
the better right to its exclusive use to enjoin the other from using it. 
There is in such cases no element of fraud, but it is evident that it 
may be of quite as much importance to the legal owner of the mark 
to prevent its use by another who may have used it in good faith as to 
prevent its fraudulent use by others. 

That a manufacturer or dealer engaged in a particular line of busi- 
ness should unintentionally select as a mark for a particular class of 
goods sold by him the same mark which has previously been used by 
another for the same class of goods as a matter of fact has repeatedly 
happened. So many instances of the adoption by two or more traders 
of substantially the same mark were found when the trademark reg- 
istration act of 1875, of Great Britain, went into effect that it was found 
necessary to frame a rule known as the " three-mark rule," under which 
identical or similar ''old marks," i. e., marks in use before the date of 
the act, might be registered by different persons up to the number of 
three, but not more; the rule providing that if the mark had been used 
Ijona fide by more than three persons it must be treated as common to 
the trade and no registration at all allowed. This seems remarkable 
without a clear understanding of what sort of devices are used as 
trademarks. 

It is the exception that there is anything novel or elaborately artis- 
tic about a trademark. There is seldom anything which involves 
study or invention or skill of any sort in the trademark itself. The 
larger proportion of those in use consist of a single simple device or a 
single word. It is generally considered that a mark to be effective for 
its purpose should be as simple and striking as possible, should either 
consist of or have as a prominent feature some representation or word 
which will be readily caught by the eye of the purchaser and retained 
in his memory, so that when he comes to make a second purchase he 
will look for and readily recognize that particular mark. Such a trade- 
mark is, for instance, the representation of a star, an arrow, anchor, 
crescent, crown, cross, diamond, seal, triangle, or the word "star," 
"arrow," etc. 

The representation of a star or the word "star" has been registered 
in the United States Patent Office as a trademark for nearly every 
recognized class of goods, having been registered nearly 400 times. 



DISSEJS^TING BEPORT TRADEMARKS. Ill 

indicating that, leaving out of consideration reregistrations to the 
same owner, made necessary by a change in the law, several hundred 
manufacturers and dealers have adopted and used that mark on some 
class of goods. In about 150 instances, the representation of an 
anchor or the word ''anchor" has been registered. 

It will, of course, be understood that a star or an anchor or any other 
mark ma}^ be used by manufacturers of or dealers in different classes 
of goods without conflict. For instance, the use of a star as a mark 
for tobacco does not conflict with the use of a star as a mark for 
matches or dress braid. It is only when two persons put upon the 
market goods of the same class bearing the same mark that confusion 
in the mind of the public is liable to be caused or purchasers are 
deceived. 

Comparativel}^ few such cases arose under the commercial conditions 
which prevailed up to the middle of the present century. No doubt 
under the conditions then prevailing the same mark was used by dif- 
ferent manufacturers and dealers, but from the fact that the cost of 
transportation precluded the sending of goods any considerable dis- 
tance from the locality of their production, competition was necessarily 
restricted to those who necessarily knew the trademarks used by their 
rivals in trade. Whether the holding in the case of Blanchard v. Hill, 
above referred to, was correct or not was of comparatively little 
importance at the time that decision was rendered or for many years 
thereafter. 

As manufacturing increased and the facilities for transportation were 
improved, competition became less restricted and it was found that the 
goods of a manufacturer or dealer must be sold in competition not only 
with others in his immediate locality, whose marks were well known 
to him and to whom his marks were well known, but with those located 
at a great distance, even in a foreign country, of whose very existence 
he was not aware and of whose trademarks he could know nothing. 
In the wider market made accessible by the reduction in the cost of 
transportation, not only was the value of a distinctive trademark 
vastly increased by reason of the increased sale of goods, but the pos- 
sibility that such mark had been used by others was greatly increased. 
It therefore happened that the question of the right of ownership in a 
distinctive mark between those who had adopted and used it in good 
faith and had made it valuable was frequently raised before the courts 
of England and the United States. With no statutory provision to 
guide them, without precedent to sustain them, in the face of a decision 
which had stood unchallenged for nearly a centoy, the courts of Eng- 
land and the United States, recognizing the necessities of the case, met 
these necessities by creating the so-called common law of trademarks. 
First, it was necessary to hold that there could be a property right in 
the exclusive use of a particular mark. It was so held in Millington 
V. Fox, above referred to, although to so hold was contrary to the 
holding in Blanchard v. Hill. It was then necessary to determine how 
this propert}^ right could be acquired, under what circumstance it was 
lost and what kinds of marks could and what could not be the subject 
of such property right. 

THE NECESSITY FOR REGISTRATION OF TRADEMARKS. 

The way in which this so-called common law of trademarks arose 
and the reasonable objections which exist to this law as it is applied to 



112 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

this class of cases, is well stated in the dissenting opinion of Judge 
Robertson, of the court of appeals of New York, in the case of Bur- 
nett V. Phalon (9 Bos., 192, 5 Abb. Pr. R. N. S., 212, 3 Keyes, 594, Cox 
Am. Trade-mark Cases, 376, 1867), in which, after referring to the 
common liability of every one who palmed off upon the public his com- 
modities as those of another man, to the deceived customer, and indi- 
rectly to the supplanted competitor, he says: 

Equity seized on jurisdiction to prevent repetitions of the wrong and, with its cus- 
tomary eagerness to amplify such jurisdiction and model the relief granted by it to 
every phase of such wrong, created the doctrine of what are called trademarks. In 
doing so, it has nearly established a common law copyright of perpetual duration, 
permitting an injunction without a trial at law, calling upon the defendant for an 
account of his profits, and even attempting to reach what are claimed to be instru- 
ments prepared for future fraud. This may be a very healthful jurisdiction, but, 
without great care, its searching character may be made an instrument of wrong. 
Much is said of the injustice of allowing one man to avail himself of the skill and 
expenditure of another by false representations, which is well founded; but where, 
instead of using the name of the owner or vendor, strange devices and insignia are 
employed to indicate such ownership or source, which do so but ambiguously, and 
require considerable familiarity and experience with them to connect them there- 
with, no great sympathy is created for those using such devices. 

Were they the subjects of copyrights, or other modes of warning mankind against 
trespassing on a settled right, there would be greater justice in punishing the tres- 
passer; but the most innocent may be caught unwarily in a litigation where a word 
is employed as a device originating in some measure from the materials used in form- 
ing a composition, as in this case, where one of the plaintiffs admits that he framed 
Cocaine as a word, and that it was suggested by the cocoanut oil employed in the 
manufacture of the article, while the discoverer of the word Cocoine claims that is 
a word framed according to the genius of the French language, to express the extract 
of that oil. 

While it is a general principle of the common law that a property right 
can not be acquired without notice of such right, and tresspassers can not 
be held liable unless they have reasonable notice of such claim, particu- 
larly if the thing in which the property right is one which is not to be 
necessarily presumed to be the property of another, the courts were 
compelled to hold, not only that the user of a trademark acquired by 
such use a right to the mark, but that such right was an exclusive 
right and could be enforced against another who used the mark with- 
out actual notice of the claim of right. That the notice, which consists 
merely in the use of the mark on goods is in many cases, particularly to 
others located at a great distance, not actual notice of the claim of 
the first user to the exclusive property in the mark, has been found to 
be a fact in many cases. To hold that the mere use of the mark is a 
sufficient notice to warrant the courts in depriving another who never 
saw, and from the circumstances of the case could not have seen, the 
goods bearing the mark, is recognized by Judge Robertson as seriously 
objectionable and undoubtedly may, and frequently does, work a great 
hardship. Yet as the common law did not provide any way other than 
use of the mark on goods by which notice could be given of the claim 
of exclusive property in the mark, it was necessary in order to hold 
that trademarks could be the subject of a property right that such 
notice was sufficient, whatever of hardship such holding might involve. 

The right of property was, however, limited by the courts to marks 
which were of an arbitrarj^ character, distinctly different from those 
which it must be presumed would naturally be used by others who 
produce or deal in the class of goods to which the mark is applied. 
As was said by the United States Supreme Court in the case of Canal 
Co. V, Clark (13 Wallace, 311), a case which arose under the common 



DISSENTING KEPOET TEADEMARKS. 113 

law, quoting from the opinion of Judge Duer, in the case of Amoskeag 
Mfg. Co. V. Spear (2 Sandf., S. C, 599): 

(One) has no right to appropriate a sign or symbol which, from the nature of the 
fact which it is used to signify, others may employ with equal truth, and therefore 
have an equal right to employ for the same purpose. 

TRADEMARK LEGISLATION IN GREAT BRITAIN. 

The fact that the remedies afforded by the common law were insuffi- 
cient to adequately protect the owners of trademarks from willful 
fraudulent use of their marks by others led in Great Britain to the 
adoption of the merchandise marks act of 1862 which provided that — 

Every person who, with intent to defraud, or to enable another to defraud, any 
person, shall forge or counterfeit, or cause or procure to be forged or counterfeited 
any trademark * -^^ * shall be guilty of a misdemeanor, 

and provided that every person found guilty of such misdemeanor 
should be liable to punishment ' ' by imprisonment for not more'than 
two years with or without hard labor or by fine, or both by imprison- 
ment with or without hard labor and fine. " 

This statute supplied, as far as Great Britain was concerned, what 
was lacking in the common law as to protection of trademarks against 
willful infringers; that is, those who had actual knowledge of the use 
of a particular mark by its owner, and deliberately and with intent to 
defraud made use of such mark. Nothing more was needed so far as 
the cases of unfair competition in which actual knowledge of prior use 
of the mark could be proved were concerned. It did not reach the cases 
in which such actual knowledge could not be proved, since it provided 
no means by which the owner of the mark could give such notice, 
"such warning against trespassing on a settled right," that others 
could be legally presumed to have knowledge of his claim to the 
exclusive property in his mark and for the same reason it was not 
calculated to give any relief in the second class of cases above referred 
to, those in which there was no knowledge by the latter user of the 
claim of the first user to the property right in the mark and no intent 
to defraud. 

Under the law as it then stood in Great Britain, it was almost 
impossible for a manufacturer to ascertain whether any particular mark 
which he might wish to adopt as a distiguishing mark for his goods 
was one which he was free to adopt and make his own or had been 
already appropriated. He could not be certain that after he had used a 
mark for a considerable time and had made it valuable, he would not 
be compelled to yield his right to its use, and with it in great part the 
business which he had built up, to some one whose use of the mark 
perhaps in a merely local market was prior in date. The same diffi- 
culties were found to exist in this country with the difference that at 
the time there was no statute punishing willful infringement of a trade- 
mark. 

These difficulties led in Great Britain in 1875 to the adoption of an 
act which not only created an office for the registration of trademarks 
and permitted owners of trademarks to register their marks, but made 
such registration essential to the protection of such marks by the 
courts. The first section of this act is as follows: 

1. A register of trade-marks as defined by this act and of the proprietors thereof 
shall be established imder the superintendence of the commissioner of patents, and 
from and after the first day of July, one thousand eight hundred and seventy-six, a 



114 REVISION OF STATUTES RELATING TO PATENTS. ETC. 

person shall not be entitled to institute any proceeding to prevent the infringement 
of any trademark as defined by this act until and unless such trademark is registered 
in pursuance of this act. 

In thus adopting a compulsory registration law Great Britain was 
following the example of other commercial nations, all of the more 
important European countries having adopted prior to that date, some 
of them long prior thereto, similar laws. In some of these countries 
not only is registration of trademarks required as a prerequisite to the 
recognition of his legal right to its exclusive use, but registration, which 
is in this country public notice of the claim of an exclusive right to a 
particular mark and nothing more, is considered of such importance 
that the first to file the mark for registration is by law the owner of the 
mark. Such laws, of which that of Germany ^ is a good example, are 
known as attributive laws, while that of France^ under which registra- 
tion, though necessary to obtain the full benefit of the law, is not 
essential to ownership, is, like the United States law so far as that 
law can be said to afford any protection to trademarks, known as a 
declaratory law. 

ADVANTAGE OF REGISTRATION OF TRADEMARKS TO THE PUBLIC. . 

The necessity and advantages to the public of providing for the reg- 
istration of trademarks is well set forth in the explanatory statement 
made by the Ministers of Justice and of Commerce, etc. , and annexed 
to a bill respecting trademarks presented to the chamber of the States- 
General of the Netherlands in 1879, which bill was subsequently passed 
and became the law of May 25, 1880, of the Netherlands, as follows 
(translation given in a commercial report No. 12 of 1879, presented to 
the British Parliament) : 

The State should afford an opportunity to the public to acquire authentic informa- 
tion with regard to those marks, for the exclusive right to which application may 
have been made. The means afforded for depositing and reporting marks in places 
accessible to the public conduce to this object. By this means the precise nature of 
the mark itself, as well as the date from which the general employment of such work 
ceases to be allowed, will be exactly determined. In this way it will be possible for 
persons interested to prove their right in a simple and inexpensive manner, while 
other persons can secure themselves against the unintentional assumption of a mark 
similar to one already used by another person. 

PROTECTION TO TRADEMARKS UNDER THE ACT OF 1881. 

The trademark act of March 3, 1881, is not only merely declaratory 
in that it does not make the right of property in any trademark depend 
for its inceptive existence or support upon the requirements contained 
therein, but, as has been above pointed out, it adds nothing to the com- 
mon law so far as concerns the prevention or redress of infringements 
of trademarks registered in compliance with its provisions. The law 
thus contains nothing which is effective to induce, much less compel, 
the owners of trademarks to register them. It gives at most a mere 
color of protection. It provides a means by which owners of certain 
trademarks may, if they choose, give notice of their claims to an exclu- 
sive right in such marks, warning mankind against trespassing upon 
such rights, but does not make such notice effective to give the regis- 
trant any substantial advantage against infringers which he may not 
have without registration. It permits registration without requiring it. 

^Appendix, Chap. XXII, p. 352. ^^ppendix, Chap. XXIII, p. 363. 



DISSENTING REPOET TRADEMARKS. 115 

Further, this act provides for the registration only of trademarks 
used in commerce with foreign nations or with the Indian tribes, not 
eA^en permitting owners of trademarks used in the internal commerce 
of this country to give notice to their claim of an exclusive right in 
their marks, to warn others against trespassing upon such rights. As 
was pointed out in the explanatory statement made by the Ministers 
of Justice and of Commerce, etc. , of the Netherlands, above referred to, 
this notice is of distinct importance to the general public. In fact, it is 
of quite as much importance as to the owner of the mark, of so much 
importance that the justice of holding a mark to be the exclusive prop- 
erty of such owner as against another who uses it without notice has been 
seriously questioned. (See the dissenting opinion of Judge Robert- 
son in Burnett v. Phalon, above referred to.)^ 

CONSTITUTIONAL POWER OF CONGRESS WITH RESPECT TO TRADEMARKS. 

That Congress has no power under the Constitution to provide for 
the registration or protection of trademarks used in commerce carried 
on wholly within one of the States of the Union has been decided by 
the Supreme Court in the Trademark Cases (100 U. S., 82).^ But that 
court has not held that Congress is without power under the Constitu- 
tion to provide by law for the registration and protection of trademarks 
used in commerce among the several States. That trademarks used in 
such commerce, but not in commerce with foreign nations or with the 
Indian tribes, are much more numerous than the marks entitled to be 
registered under the act of 1881 can not be doubted. The commerce of 
the United States Avith foreign nations, so far as manufactures are con- 
cerned (and it is to be remembered that trademarks are practically not 
used to any considerable extent except upon manufactures), has, up to 
very recent years, been inconsiderable in comparison with the commerce 
in manufactures among the several States. That trademarks are used 
in interstate commerce to a very great and rapidly increasing extent is 
apparent to anyone who has considered the subject. Even if it could 
be assumed that all trademarks entitled to registration under the act of 
1881 — that is, trademarks used in commerce with foreign nations and 
with the Indian tribes — were registered, it is evident that the register 
of trademarks, which had become by adoption and use the subject of an 
exclusive property, would be far from complete and would not enable 
the public to acquire authentic information as to the marks in use, such 
as would enable persons to secure themselves against the unintentional 
assumption of a mark similar to one already used by another. While 
it may be that even to provide for the registration of marks used in 
interstate commerce would not result in placing upon the register all 
marks Avhich have become the subject of an exclusive property, since 
no doubt some marks are used in commerce which is carried on exclu- 
sively within a single State, there can be no doubt that it would result 
in making the register far more nearly complete, and it is believed would 
make it practically complete, since with modern methods of transporta- 
tion there is little difficulty in extending the trade in any manufactured 
article of substantial merit beyond the confines of the State in which 
its manufacture is carried on. In the interests of the public the owner 
of a trademark used in interstate commerce should be permitted to 
give notice of his claim of property in his mark by registering it in 

iPage 112, 2 Appendix, Chap. XXV, p. 413, 



116 REVISIOTT OF STATUTES KELATIJSTG TO PATENTS, ETC. 

the Patent Office, if Congress has under the Constitution the power to 
provide for the registration of such marks. 

That the power of Congress to provide for the registration of trade- 
marks used in interstate commerce — and the same is true as regards 
trademarks used in foreign commerce and commerce with the Indian 
tribes — must be derived, if it exists at all, from the third clause of 
section 8 of Article I of the Constitution, which, read in connection 
with the granting clause, is as follows: 

The Congress shall have power to regulate Comraerce with foreign Nations, and 
among the several States, and with the Indian Tribes, 

is clear from the decision of the Supreme Court in the Trademark 
Cases (100 U. S., 82), before referred to.^ Whether Congress has this 
power depends, as stated by the Supreme Court in that decision, upon 
the question ' ' whether the trademark bears such a relation to commerce 
in general terms as to bring it within Congressional control where used 
or applied to the classes of commerce which fall within that control." 

THE RELATION OF TRADEMARKS TO COMMERCE. 

That the trademark is generally accepted as bearing a close relation 
to commerce is evident from its very name. And this is true as well 
if the French term ''mark of manufacture and of commerce " {marque 
de fabrique et de commerce) is considered. So, too, if the German 
term, "merchandise mark" {Waaren-zeichen) is considered. And 
though a trademark may be the property of a manufacturer as well 
as of a trader, he acquires and retains the right to the exclusive use of 
the mark only by placing his goods which bear it upon the market. 
In other words, the manufacturer can be an owner of a mark only by 
reason of the fact that he is necessarily a trader to the extent of dis- 
posing of his goods to others, whether those to whom he sells his 
goods are consumers or are traders who buy to sell again. The owner- 
ship of a mark is inseparable from its use in trade. No one who does 
not actually use the mark can have a right of property in it. It is 
like the good will of a business, absolutely inseparable from the busi- 
ness. Its close relation to commerce has been recognized by the courts 
from the earliest times. In the case of Blanchard v. Hill, before 
referred to. Lord Hardwicke in 1742 refused to recognize a right of 
property in a trademark on the ground that to do so would, in his 
opinion, "be of mischievous consequence;" that is, would have the 
effect of creating monopolies in trade; and while this view is to day 
recognized to be wrong, the very fact that he considered that an exclu- 
sive right to a trademark would operate as a restraint upon trade 
shows that he recognized the intimate relation which the trademark 
bears to commerce. In one of the earliest trademark cases which 
came before a United States court, the case of Taylor v. Carpenter 
(circuit court U. S., dist. of Mass., 1846; 2 Wood & M. I.; Cox, Am. 
Trademark Cases, 32), the right to protection of a trademark is recog- 
nized as inseparable from the right to trade. In this decision Judge 
Woodbury says: 

We are under treaty obligations to Great Britain and most other European powers 
to admit their merchandise on favoral)le terms and to allow their merchants to 
trade here as those of favored nations. But it would be a mockery of such provi- 
sions and enjoyments if we prevented them from selling their goods after arriving 

iPage li3. 



DISSENTING EEPORT TEADEMARKS. 117 

here (Ch. J. Marshall in Brown v. State of Md., 12 Wheat., 447), unless noxious to 
health or morals; or if we made onerous discriminations against them or prevented 
their receiving the proceeds of their goods or abstained from yielding protection against 
injuries to them or to their marks. 

The report made by Thomas Jefferson, above referred to, is such as 
to leave no doubt of his opinion as to the intimate relation which the 
trademark bears to commerce, or as to the power of Congress under 
the commerce clause of the Constitution to provide for the registra- 
tion and protection of trademarks used in interstate as well as foreign 
commerce. 

The experience of the commercial world has demonstrated the prac- 
tical importance, the absolute necessity to a proper regulation of com- 
merce of the recognition of a property right in trademarks and the 
protection of this right. No country other than the United States has 
in its constitution a provision limiting the power of the General Gov- 
ernment to regulate commerce generally, and all countries which have 
any pretension to commercial importance provide in their trademark 
laws for the registration and protection of the trademarks of their 
citizens or subjects without regard to the kind of commerce in which 
they are used, and no question of the constitutionality of such laws 
appears to have arisen in any foreign country. The universal recog- 
nition of the intimate relation between the trademark and commerce 
appears from the fact that in the laws of all of the more important 
countries the right of property in a trademark is accorded only to 
manufacturers or traders, is dependent on its use on the goods of its 
owner, and is transferable only with the transfer of the business in 
which it is used or so much of it as relates to the manufacture and 
sale of the goods to which it is applied. The right to the mark may 
be perpetual, provided the manufacture and sale of the goods con- 
tinue. If the business is abandoned the right to the trademark 
ceases to exist. 

TRADEMARK TREATIES. 

All of the countries of the world which are large exporters of man- 
ufactured articles have found it of vital importance to their export 
trade to secure through diplomatic action from the countries in which 
their manufactures find a market assurance that the trademarks of 
their citizens or subjects should be protected against infringement. 
Great Britain, France, and Germany, in fact ail of the more important 
European nations, have been most energetic in their endeavors to secure 
such assurances from all countries in which there was opportunity for 
trade with the result that to-day the trademarks of the manufacturers 
and exporters of these countries are, under reasonable conditions 
of registration, entitled to protection throughout the world. The 
diplomatic agreements by which these advantages are secured are in 
many cases made a part of treaties of commerce and navigation, as in 
the treaties on these subjects concluded between the United States and 
Russia, 1868 ;^ the United States and Belgium, 1868;^ the United 
States and Germany, 1871;^ the United States and Serbia, 1881;* and 
the United States and Japan, 1894,^ and in many of the treaties 
between European nations and between European and other nations. 

^Appendix, Chap. XVIII, sec. 11, p. 335. ^Appendix, Chap. XVIII, sec. 12, p. 336. 
^Appendix, Chap. XVIII, sec. 2, p. 326. ^Appendix, Chap. XVIII, sec. 9, p. 332. 
^Appendix, Chap. XVIII, sec. 6, p. 331. 



118 EE VISION OF STATUTES RELATING TO PATENTS, ETC. 
SECTION 11 OF THE ACT OF JULY 24, 1897. 



The Congress has distinctly recognized the relation of the trademark 
to commerce and the necessity for protecting domestic manufactures 
against infringements of their rights by foreigners by repeatedly 
reenacting, as has been above pointed out, the law which now stands 
as section 11 of the act of July 24, 1897, under which is prohibited 
the admission to entry at any custom-house of the United States of 
any articles of imported merchandise which copy or simulate the name 
or trademark of a domestic manufacturer, a law which commends 
itself as just and necessary to the protection of the manufacturing 
industries of this country, but which must rest for its constitutionality 
solely on the clause of the Constitution which gives to Congress the 
power to regulate commerce with foreign nations, and on such a con- 
struction of that clause as brings the regulation of trademarks a part 
of the general regulation of commerce. That this law is valid as being 
within the power of Congress under the Constitution is not doubted. 

IMPORTANCE TO COMMERCE OF THE J»ROTECTION OF TRADEMARKS. 

That the protection of trademarks used in commerce among the 
several States is necessary if honest competition is to be encouraged, 
and it can hardly be questioned that it is as important to the public 
interest that honest}^ in competition should be encouraged, a competi- 
tion which stimulates effort and leads to excellence, as it is that con- 
tracts in restraint of trade should be prohibited, is not open to doubt. 
The only question necessary to be considered is by what authority 
they should be regulated and protected. 

In the case of Addyston Pipe & Steel Co. v. U. S. (175 U. S., 211), 
decided b}" the Supreme Court at the October term, 1899, it was said, 
in the opinion of the court, delivered by Mr. Justice Peckham, in ref- 
erence to private contracts which were intended to operate to prevent 
fair and open competition, that: 

It is, indeed, urged that to include private contracts of this description within the 
grant of this power to Congress is to take from the States their own power over the 
subject, and to interfere with the Hberty of the individual in a manner and to an 
extent never contemplated by the framers of the Constitution, and not fairly justified 
by any language used in that instrument. If Congress has not the power to legislate 
upon the subject of contracts of the kind mentioned, because the constitutional pro- 
vision as to the liberty of the citizen limits to that extent its power to regulate inter- 
state commerce, then it would seem to follow that the several States have that power, 
although such contracts relate to interstate commerce and more or less regulate it. 
If neither Congress nor the State legislatures have such power, then we are brought 
to the somewhat extraordinary position that there is no authority. State or National, 
which can legislate upon the subject of or prohibit such contracts. This can not be 
the case. 

If it should be held that Congress has no power and the State legislatures have 
full and complete authority to thus far regulate interstate commerce by means of 
their control over private contracts between individuals or corporations, then the 
legislation of the different States might and probably would differ in regard to the 
matter, according to what each State might regard as its own particular interest. 
One State might condemn all kinds of contracts of the class described while another 
might permit the making of all of them, while still another might permit some and 
prohibit others, and thus great confusion would ensue and it would be difficult in 
many cases to know just what law was applicable to any particular contract regard- 
ing and regulating interstate commerce. At the same time contracts might be made 
between individuals or corporations of such extent and magnitude as to seriously 
affect commerce among the States. These consequences would seemingly necessarily 
follow if it were decided that the State legislatures had control over the subject to 
the extent mentioned. 



II 



DISSENTING EEPOET TRADEMARKS. 119 

Applying the language of the court in this decision to the question 
of the prevention of unfair competition in interstate commerce by 
providing for the protection of trademarks used in such commerce, 
may it not be said that — 

If neither Congress nor the State legislatures have the power to protect such trade- 
marks, then we are brought to the somewhat extraordinary position that there is no 
authority, State or National, which can legislate upon the subject of or protect such 
trademarks. This can not be the case. 

DECISIONS OF UNITED STATES COURTS ON TRADEMARKS. 

If it should be held that Congress has no power and the State legis- 
latures have full and complete authority to regulate interstate com- 
merce by determining the conditions under which trademarks used in 
such commerce are to be protected, then it must be said that the 
condition of affairs with respect to such trademarks, which in respect 
to certain contracts is pointed out in this decision of the Supreme 
Court as seriously objectionable, has already arisen. Nearly all of the 
several States have alread}^, as has been above set forth, adopted laws 
providing for the registration and protection of trademarks. These 
laws are far from uniform, and if they are to be taken as applying to 
trademarks used in interstate and foreign commerce (for, as stated in 
the above decision of the Supreme Court, "when we speak of inter- 
state we also include in our meaning foreign commerce"), a condition 
which is far from desirable is presented. The right to the ownership 
of a trademark, the question of what constitutes a trademark, and 
the other important questions on which the protection of trademarks 
depends would be, and to some extent are to-day, subject to incon- 
sistent and contradictory decisions among the courts of the different 
States, and that, too, upon matters which pertain to the regulation of 
interstate commerce. Numerous cases involving trademarks between 
citizens of different States and even between subjects of foreign nations 
and citizens of the United States have been brought before State 
courts, and such courts have taken jurisdiction of and decided such 
cases. The plaintiff in the case of Amoskeag Mfg. Co. v. Spear (2 
Sand., S. C, 599, Cox Am. Trade-mark Cases, 67), decided in 1849 in 
the superior court of the city of New York, which is recognized as 
a leading case on the subject of trademarks and has been repeatedly 
cited with approval by the Supreme Court, was a corporation engaged 
in the manufacture of cotton goods at Amoskeag Falls in the State of 
New Hampshire. The complainants in the case of Taylor v. Carpenter 
(11 Paige, 392, and 2 Sand., Ch. R., 603; Cox Am. Trademark Cases, 
45), decided in 1846 by the court for the correction of errors of New 
York, were British subjects of the borough of Leicester, England. 
In Coats V. Holbrook (2 Sand., Ch. R., 586, Cox Am. Trademark 
Cases, 20) decided in 1845 in the court of chancery of New York, 
the complainants were British subjects located at Paisley, Scotland. 
In Derringer v. Plate decided by the supreme court of California (29 
Cal. , 292, Cox Am. Trademark Cases, 324) the plaintiff' was a resident 
of Pennsylvania. 

Cases in which the same conditions, as to residence of the parties, 
obtained have been decided by courts of the United States. Not a few 
of these cases have by appeal been brought before the Supreme Court. 
Nearly all of the later cases involving a controversy as to the right to 
a trademark between citizens of different States or between an alien 

S. Doc. 20 9* 



120 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

and a citizen of the United States have been brought before United 
States courts under the provision of the Constitution which extends the 
judicial power of the United States courts to "controversies * * * 
between citizens of different States * * * and between a State, or 
the citizens thereof and foreign States, citizens or subjects." (Article 
III, sec. 2.) 

COMMON LAW OF THE UNITED STATES. 

The United States courts in deciding the trademark cases brought 
before them have applied the principles of the so-called common law 
of trademarks. The right to entertain jurisdiction of such cases or to 
decide them in accordance with the so-called common law of trademarks 
was assumed in the first trademark case brought before a United States 
court, the case of Taylor 'y. Carpenter, before referred to,^ decided in 
IStti by Judge Story in the circuit court for the district of Massa- 
chusetts) 3 Story, 458, Cox Am. Trade-mark Cases, 14), and no question 
of the right of the United States courts to apply in such cases this com- 
mon law of trademarks appears to have been raised in any of the 
numerous cases thereafter decided by such courts, notwithstanding 
that this common law of trademarks was not the common law as it was 
held to exist prior to the separation of this country from Great Britain, 
but was the law derived from decisions rendered in the courts of Great 
Britain long subsequent to such separation, and notwithstanding that 
in a case involving copyright, a subject in many respects analogous to 
that of trademarks, it had been distinctly held by the Supreme Court 
that: 

It is clear there can be no common law of the United States. The Federal Gov- 
ernment is composed of 24 sovereign and independent States, each of which may 
have its local usages, customs, and common law. There is no principle which per- 
vades the Union and has the authority of law that is not embodied in the Constitu- 
tion or laws of the Union. The common law could be made a part of our Federal 
system only by legislative adoption. 

When, therefore, a common-law right is asserted, we must look to the State in 
which the controversy originated; and in the case under consideration, as the copy- 
right was entered in the clerk's office of the district court of Pennsylvania, for the 
first volume of the book in controversy, and it was published in that State, we may 
inquire w-hether the common law as to copyrights, if any existed, was adopted in 
Pennsylvania. 

It is insisted that our ancestors when they migrated to this country brought with 
them the English common law as a part of their heritage. 

That this was the case to a limited extentls admitted. No one will contend that 
the common law as it existed in England has ever been in force in all its provisions 
in any State in this Union. It was adopted so far only as its principles were suited 
to the condition of the colonies, and from this circumstance we see what is common 
law in one State is not so considered in another. The judicial decisions, the usages, 
and customs of the respective States must determine how far the common law has 
been introduced and sanctioned in each. (Wheaton et al. v. Peters et al., 33 U. S.; 
8 Peters, 791. ) 

Notwithstanding this decision the United States courts, as well as the 
State courts, clearly recognizing the necessity of some law under 
which the right of the owner of a trademark to an exclusive property 
in its use could be protected, have not hesitated to so far apply the 
so-called common law of trademarks that it seems to be to-day recog- 
nized by the Supreme Court as the law of the land. In the decision 
of the Supreme Court in the Trademark Cases (100 U. S., 82), before 
cited, it is said: 

The right to adopt and use a symbol or device to distinguish the goods or property 
made or sold by the person whose mark it is, to the exclusion of use by all other 

1 Page 93. 



DISSENTING REPORT TRADEMARKS. 121 

persons, has been long recognized by the common law and the chancery courts of 
England and of this country, and by the statutes of some of the States. It is a prop- 
erty right for the violation of which damages may be recovered in an action at law, 
and the continuea violation of it will be enjoined by a court of equity, with compen- 
sation for past infringement. This exclusive right was not created by the act of 
Congress, and does not now depend upon it for its enforcement. The whole system 
of trade-mark property and the civil remedies for its protection existed long anterior 
to that act, and have remained in full force since its passage. 

These propositions are so well understood as to require neither the citation of 
authorities nor an elaborate argument to prove them. 

So, too, in Manufacturing Co. v. Trainer (101 U. S., 51), the court 
says: 

The general doctrine of the law as to trade-marks, the symbols or signs which may 
be used to designate products of a particular manufacture, and the protection which 
the courts will afford to those who originally appropriated them, are not contro- 
verted. Everyone is at liberty to affix to a product of his own manufacture any 
symbol or device, not previously appropriated, which will distinguish it from articles 
of the same general nature manufactured or sold by others, and thus secure to him- 
self the benefits of increased sale by reason of any peculiar excellence he may have 
given it. The symbol or device thus becomes a sign to the public of the origin of 
the goods to which it is attached, and an assurance that they are the genuine article 
of the original producer. In this way it often proves to be of great value to the 
manufacturer in preventing the substitution and sale of an inferior and different 
article for his products. It becomes his trade-mark, and the courts will protect him 
in its exclusive use, either by the imposition of damages for its wrongful appropria- 
tion or by restraining them to account for profits made on a sale of goods marked 
with it. 

See also Manhattan Co. v. Wood (108 U. S., 218), Menendez v. Holt 
(128 U. S., oil), and Kichmond Nervine Co. v. Richmond (159 U. S., 
293), in all of which the right of property in a trademark and the right 
of the owner of the mark to the protection of the courts is distinctly 
recognized. 

The Supreme Court while intimating in the Trademark Cases (100 
U. S., 82), above referred to, that ''the property in trademarks and 
the right to their exclusive use rest on the laws of the States, and, 
like the great body of the rights of person and of property, depend 
on them for securit}^ and protection," in its decisions in other trade- 
mark cases rendered both before and since the decision in the Trade- 
mark Cases have followed the circuit courts of the United States in 
looking not to the State in which the controversy arose to determine, 
from the judicial decisions, the usages and customs of that State, how 
far the common law had been there introduced and sanctioned, as was 
distinctl}" held should be done in Wheaton et al. v. Peters et al. , above 
referred to, but to the decisions of the courts of Great Britain of 
recent date, and even decisions of the courts of France, as well as deci- 
sions of the State courts of States other than that in which the contro- 
versy arose. 

THE BASIS OF THE COMMON LAW OF TRADEMARKS. 

In the first trademark case brought before a United States court, 
the case of Taylor v. Carpenter, above referred to^ (suit in equit}^), 
decided in 1841 by Judge Story in the circuit court for the district of 
Massachusetts (3 Stor}^, 158, Cox Am. Trademark Cases, 14), the 
court relied for its authorities, by referring to 2 Story Eq., sec. 
951, on decisions of the English courts rendered in 1837 and 1838. In 
the second trademark case brought before a United States court, the 
case of Taylor v. Carpenter (suit at law), decided in 1846 by Judge 

iPage93. 



122 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

AVoodbuiy in the circuit court for the district of Massachusetts (2 
Wood & M., 1, Cox Am. Trademark Cases, 32), the court based its 
decision almost exclusivelj on decisions of the English courts, refer- 
ring also to the statutes of the State of New York. In the case of 
Fowle V. Spear, decided in 1847 by Judge Kane in the circuit court 
for the eastern district of Pennsylvania (7 Penn. L. J. , 176, Cox Am. 
Trademark Cases, 67), the court applied the principles of the English 
case of Pidding v. How, decided in 1837, this being the only authorit}^ 
cited. In other cases decided b}^ the circuit courts of the United 
States, substantially the same condition is found, the decisions mainly 
relied on being the decisions of the English courts. 

In the case of McLean v. Fleming, decided by the Supreme Court in 
1877 (96 U. S., 215), the authorities on the question of trademarks 
were fulh^ reviewed and the rules determined from them were applied 
to the case, the right of the complainant to protection for his trade- 
mark being affirmed. The authorities cited as determining the prin- 
ciples of the trademark law were for the most part decisions of the 
English courts, many of them of comparatively recent date, and decis- 
ions of the State courts of the State of New York, and of the State 
courts of Massachusetts, Penns3^1vania, and Connecticut, and though 
the controversy appears to have arisen in the State of Missouri, no 
judicial decisions rendered in that State are cited. 

In the case of Singer Mfg. Co. v. June Mfg. Co., decided by the 
Supreme Court in 1896 (163 U. S., 169), decisions of State courts of 
Massachusetts and New York, as well as decisions of the United States 
circuit courts rendered in several different circuits, are cited as deter- 
mining the principles of the law applicable to the cases before the 
court, and in support of these principles English decisions are cited. 
The opinions of French writers and decisions of French courts are 
also cited, and it is stated, as having a distinct bearing on the question 
before the court, that the "French writers and courts recognize the 
doctrine to be substantially like that which is enforced in America 
and England." 

NECESSITY FOR A GENERAL TRADEMARK LAW. 

It would seem from these decisions that the United States courts 
recognizing the necessit}^ of a law for the protection of trademarks 
which should be uniform throughout the length and breadth of the 
land, finding no statute law on the subject and finding that the common 
law as determined by the judicial decisions, usages, and customs of 
Great Britain, and of certain of the States in which the common law 
has been accepted, commended itself as just and reasonable, have given 
to such law the force and effect of statute in all trademark cases 
brought before them without regard to the question of the judicial 
decisions, usages, and customs of the particular State in which the con- 
troversy arose. The attitude of the Supreme Court toward the ques- 
tion of the protection of trademarks as shown by their decisions, and 
this is true as well of the attitude of the circuit courts, seems to be 
indicated in the decision of that court in the case of the Addyston 
Pipe & Steel Co. v. U. S., above referred to,^ in which it is said: 

But upon the matter of interstate and foreign commerce and the proper regulation 
thereof, the subject being not alone national, but international in its character, the 
great importance of having but one source for the law which regulates that commerce 
throughout the length and breadth of the land can not in our opinion be overestimated. 

1 Page 118. 



DISSENTING EEPORT TEADEMARK8. 123 

That this view of the question is fully warranted and that a clear 
necessity exists for a uniform law for the protection of trademarks 
used in interstate and foreign commerce is apparent. Not only are the 
rights of owners of trademarks located in the United States to be con- 
sidered, but also the rights of alien owners of trademarks, especially 
since the United States is bound under the conditions of the treaties 
above referred to, which have been entered into with foreign nations 
on this subject, to afford to such owners of trademarks as are subjects 
or citizens of such foreign countries protection for their trademarks. 
To compel such alien owners of trademarks to go into the State courts 
and to compty with the conditions of State laws with respect to regis- 
tration is manifestly unreasonable. Yet this is practically required 
under present conditions. The State laws, as has been above stated, 
very general!}^ protect trademarks registered in accordance with their 
provisions, by providing that willful infringers of trademarks so reg- 
istered may be punished b}^ fine and imprisonment, thus giving a pro- 
tection far more adequate than that given by the so-called common 
law of trademarks which is applied by the United States courts. In 
order to secure this additional protection, the foreign owner of a trade- 
mark must not onl}^ compl}^ with the requirements of the treaty which 
requires him to deposit his mark at the Patent Office in Washington, 
paying the fee and compljdng with the requirements of the act of 
1881, but must also pay the fees required for registration in the several 
States and compty with the various requirements of the several laws. 
Unless he does so, he is not to-day given the protection for his trade- 
mark which is given to citizens of the United States. 

That this is a serious difficulty and one which has resulted in mate- 
rial embarrassment to foreign owners of trademarks, and has given 
rise to an impression among them that the United States is not dis- 
posed to carry out its treaty obligations in good faith, since they are 
unable to believe that it is powerless under the constitutional limita- 
tions to do so, is well known. At the several conferences held under 
the International Convention since the adhesion of the United States 
thereto, this matter has been brought up by the delegates from foreign 
nations. At the recent conference at Brussels in 1897, the French 
delegates presented the following resolution: 

That the Government of the United^ States of America attempt in every way to 
provide as soon as possible Federal legislation which will replace local legislation in 
reference to trademarks, and will insure an easier and more efficient suppression of 
trademark infringements. 

While it may be that this difficulty can not be wholly overcome, since 
the laws adopted by State legislatures on the subject may not and 
undoubtedly will not be uniform in all respects with the laws which 
ma}^ be adopted by Congress as regards the protection of trademarks 
and the remedies against infringers, and local — that is. State — legisla- 
tion on the subject of trademarks in so far as regards the commerce 
which may be regulated by the States can not, under the Constitution, 
be replaced by legislation by Congress, there is no question that this 
difficulty would be largely done away with b}^ the adoption by Congress 
of a law which should adequately provide for the registration and pro- 
tection of trademarks used in commerce among the several States, as 
well as commerce with foreign nations and the Indian tribes. 



124 EEVISIOK OF STATUTES RELATING TO PATEKTS, ETC. 
POWER OF CONGRESS TO REGULATE TRADEMARKS. 

That Congress may enact into law the so-called common law of 
trademarks, which is now given the force and effect of statutory law 
by the United States courts making that law applicable to controver- 
sies respecting trademarks, of which the United States courts have 
jurisdiction under the provisions of the Constitution — that is, contro- 
versies arising between citizens of different States and between citi- 
zens of the United States and citizens or subjects of foreign States — 
seems clear. That the United States courts have no jurisdiction over 
controversies with respect to trademarks arising between citizens of 
the same State, except as jurisdiction as to such cases has been or ma}^ 
be given by act of Congress, is also clear. (See Ky der v. Holt, 128 U. S. , 
525, and Trade-mark Cases, 100 U. S., 82, before referred to.^) 

That manufactures made and consumed within a State are subject to 
State legislation and are not subject to regulation by Congress is clear 
from the opinion of Jefferson above referred to, and from numerous 
decisions of the courts. There is, however, a clear distinction between 
manufacture and commerce, as was pointed out in the decision of the 
Supreme Court in the case of the United States d. E. C. Knight Co. 
(156 U. S., 1.) The holding in this case is thus stated in the decision 
of the Supreme Court in the case of Addyston Pipe & Steel Co. v. 
U. S. , before referred to: ^ 

* * "^ The case was decided upon the principle that a combination simply to 
control manufacture was not a violation of the act of Congress, because such a con- 
tract or combination did not directly control or affect interstate commerce, but that 
contracts for the sale and transportation to other States of specific articles were 
proper subjects for regulation, because they did form part of such commerce. 

the court thus clearly indicating that Congress has the power under 
the Constitution to regulate contracts for the sale and transportation 
to other States of specific articles. 

In the decision in Add3^ston Pipe & Steel Co. v. U. S. the court 
further holds: 

Where the contract is for the sale of the article and for its delivery in another 
State, the transaction is one of interstate commerce, although the vendor may have 
also agreed to manufacture it in order to fulfill his contract of sale. In such a case a 
combination would be properly called a combination in restraint of interstate com- 
merce, and not one relating only to manufacture. 

If trademarks related solely to manufactures, under these decisions 
they would not be subject to regulations by Congress. But, as has 
been above pointed out, while trademarks may be the propert}^ of 
manufacturers, the right to their exclusive use can be acquired only 
through the sale of the manufactured articles, either directly to con- 
sumers or to others through whom they are sold to the consumers. 
Trademarks pertain distinctively to the sale of articles, their sole pur- 
pose and function being to enable the buyer to distinguish the goods 
of one manufacturer from goods of the same kind made by another. 

REGULATION OF INTERSTATE TRADEMARKS WITHIN CONGRESSIONAL 

CONTROL. 

If, as held by the Supreme Court in the above case, contracts for 
the sale of an article and for its delivery in another State are so far 
within the constitutional power of Congress to regulate that it may 
enact legislation to prohibit and punish combinations affecting them as 

iPage im, 2 Page lis! 



DISSENTING REPOBT TRADEMARKS. 125 

being in restraint of interstate commerce, it seems clear that contracts 
"for the sale of an article and its delivery in another State, although 
the vendor may have also agreed to manufacture it in order to fulfill 
his contract of sale," are within the power of Congress to regulate in 
so far as may be necessary to prevent the carrying out of any such 
contracts which involve unfair competition with others engaged in 
interstate commerce. In other words, if Congress has power to pre- 
vent combinations in restraint of competition in the sale and exchange 
of commodities among the several States, it seems clear that it has 
also the power to prevent unfairness in competition in such sale and 
exchange by providing for the protection of trademarks used in com- 
merce among the several States. The direct tendency of the protec- 
tion of trademarks is, as stated by Judge Duer in the well-known case 
of Amoskeag Mfg. Co. v. Spear, before referred to:^ 

■X- * * fiQ produce and encourage a competition by which the interests of the 
public are sure to be promoted; a competition that stimulates effort and leads to 
excellence, from the certainty of an adequate reward. 

In the same decision it is clearly pointed out that the imitator of a 
trademark by which the goods of another are distinguished and known — 

* * * Commits a fraud upon the public, and upon the true owner of the trade- 
marks. The purchaser has imposed upon him an article he never meant to buy, 
and the owner is robbed of the fruits of the reputation that he has successfully 
labored to earn. 

That the use of a trademark by others than its rightful owner may 
injuriously affect the commerce in which it is used, even to the extent 
of practically destroying the trade in the article on which it is used 
by destroying the confidence of the public in the article bearing the 
trademark, is obvious and has, without doubt, repeatedly happened. 
It thus directly obstructs and thus regulates the commerce in which it 
is used, whether this be commerce within a State or commerce with 
foreign nations or Indian tribes or commerce among the several States. 
Looked at from this standpoint, the use of a trademark in interstate 
commerce by others than its rightful owner is within the power of Con- 
gress to regulate under the decision of the Supreme Court in Addyson 
Pipe & Steel Co. v. U. S., above referred to,^ in which it isheld that — 

Anything which directly obstructs, and thus regulates, that commerce which is 
carried on among the States, whether it is State legislation or private contracts 
between individuals or corporations, should be subject to the power of Congress in 
the regulation of that commerce. 

The regulation of trademarks used in interstate commerce, as well 
as foreign commerce, being, as has been pointed out, within the con- 
stitutional authority of Congress, it is important to the commercial 
interests that this authority be exercised to the extent of providing in 
the interest of the public that all persons engaged in interstate or for- 
eign commerce shall be permitted to give notice, by registration, of 
their claim of right to the marks used by them in such commerce and 
by affording to registrants a measure of protection greater than that 
afforded by the common law without the necessity for registration, in 
order to induce general registration of marks used in commerce within 
Congressional control. As to tbe extent of the additional protection 
which should be afforded by statute there is serious question. There 
is no doubt that to provide a criminal remedy against deliberate and 
willful infringement is logical and in many respects desirable, yet the 

iPage 113. 2pagg i^^^ 



126 

expedienc}^ of such a provision is open to serious doubt. In Adew of 
this doubt, and in view of the further fact that the question of such 
a remedy is a question of criminal law rather than trademark law, I 
am of opinion that it should be left to the consideration of the com- 
mission intrusted with the revision of the criminal laws of the United 
States. 

The proposed bill which follows gives to registrants advantages 
over those given by the common law in respect to the extent of dam- 
ages (sees. 19 and 21); in respect to the delivery up for destruction 
of copies of infringing marks, etc. (sec. 22) ; in respect to the enforce- 
ment of an injunction granted in one of the circuit courts (sec. 22) ; in 
respect to the jurisdiction of the United States courts in controver- 
sies arising between citizens of the same State (sec. 20), and in respect 
to the exclusion from entry at custom-houses of merchandise falsely 
bearing a registered trademark (sec. 26). 

The proposed bill in its general plan conforms in many respects to 
the trademark law of France, ^ in that it provides for registration of 
practically all marks, whatever their character, in use in commerce 
within Congressional control, provided they have not been already 
appropriated by another, and provides for giving to registrants 
advantages as regards remedies against infringers not enjoyed by 
nonregistrants, without at the same time making registration the basis 
of ownership in the mark. The common-law rights of owners of 
marks are by the express terms of the bill in no respect abrogated 
or lessened. (Sec. 24.) 

The proposed bill is intended rather to remedy existing defects in 
the present trademark law than to introduce into the law the princi- 
ple of attributive trademark laws, such as the trademark laws of 
Germany,^ under which ownership is determined by priority in apply- 
ing for registration, instead of by priority of use. 

In respect to the provisions for carrying into effect treaty obliga- 
tions, the bill which I propose is substantially the same as the bill 
proposed by the majority of this commission, as will appear from a 
comparison of sections 1, 6, and 26 of the bill proposed by me with 
sections 5, 8, and 33 of the majority bill. So, too, as regards the 
question of what marks should be registered, the term of registration, 
fees, appointment of representatives by nonresident registrants, 
appeals, and transfer of registered marks, the two proposed bills are 
in substantial agreement. (Compare sections 5, 15, 16, 4, 11, 12, and 24 
of the bill proposed by me with sections 6, 9, 34, 7, 14, 15, and 25 of the 
majority bill.) 

The bill proposed by me follows. 

Respectfully submitted. 

Arthur P. Greeley. 



A BILL to revise the laws of the United States relating to trade-marks 

Be it enacted hy the Senate and House of Representatives of the United 
States of America in Congress assemhled^ That any person claiming to 
be the owner of a trademark used in commerce among the several 
States, or in commerce with foreign nations or with the Indian tribes, 

1 Appendix, Chap. XXIII, p. 363. ^ Appendix, Chap. XXII, p. 852. 



DISSENTING REPOET TRADEMARKS. 127 

provided such person is domiciled within the territoi\y of the United 
States, and any person claiming to be the owner of a trademark, who 
is located in any foreign country, which by treaty, convention, or law, 
affords similar privileges to citizens of the United States, may, upon 
payment of the prescribed fees and otherwise complying with the 
requirements of this act, obtain registration therefor. 

The first paragraph of section 1 of the present trademark law (act of March 3, 
1881) is as follows: 

Be it enacted by the Senate and House of Representatives of the United States in Congress 
assembled, That the owners of trademarks used in commerce with foreign nations or 
with the Indian tribes, provided such owners shall be domiciled in the United States 
or located in any foreign country or tribes, which, by treaty, convention, or law, 
affords similar privileges to citizens of the United States, may obtain registration of 
such trademark by complying with the following requirements: 

The proposed section provides for the registration of trademarks used in interstate 
commerce, as well as those used in foreign commerce, and commerce with the Indian 
tribes. It was the opinion of Thomas Jefferson, expressed in a report made by him 
to the Second Congress, that the regulation of trademarks used in commerce * ' among 
the several States" was within the power of Congress. The latest decision of the 
Supreme Court bearing upon the subject of what constitutes interstate commerce, 
and the constitutional power of Congress in respect to the regulation of such com- 
merce, seems to warrant the belief that there can be no serious question of the power 
of Congress to provide for the registration of trademarks used in the interstate 
commerce. 

The desirability of securing the registration of all marks which are claimed as exclu- 
sive property, so that the public generally and particularly other manufacturers and 
dealers may be enabled to secure such information as will enable them to avoid the 
adoption of trade-marks already in use, is recognized by students of the trademark 
question in this country and abroad. And while, by reason of constitutional limita- 
tions, it is impossible for Congress to provide for the registration of trademarks used 
wholly within a State, no reason appears why the full power of Congress in this mat- 
ter should not be exerted. 

By the provision that ' * any person claiming to be the owner of a trademark ' ' may 
register, instead of the provision of the present law that ' ' owners of trademarks ' ' 
may register, it is intended to relieve the Commissioner of Patents of the necessity of 
considering in ex parte cases the question of ownership. 

The proposed section follows the present law in limiting the right of registration 
by foreign owners of trademarks to those located in countries with which reciprocal 
arrangements in this regard have been established. It is desirable and important in 
the interests of foreign trade that such arrangements be entered into with any and 
every foreign country in which American manufacturers may seek a market for their 
goods, but such arrangements can be secured only on the basis of reciprocity. To 
give to foreigners generally the same rights as are given to American owners of trade- 
marks would make it possible for foreign countries to exclude our manufacturers from 
the advantages of their trademark laws without detriment to the interests of their 
own manufacturers. 

Sec. 2. That before any owner of a trademark shall be entitled to 
registration thereof he shall make application therefor in writing to 
the Commissioner of Patents, and shall file in the Patent Office a state- 
ment signed by him specifying his name, domicile, and citizenship, 
and the location of his industrial or commercial establishment, the 
class of merchandise and the particular description of goods comprised 
in such class to which the particular trademark has been appropriated, 
a description of the trademark itself, if considered necessary by the 
applicant or required by the Commissioner in the particular case, a 
statement of the mode in which the trademark is applied to goods, 
and a statement of the length of time during which it has been used. 
With this statement shall be filed a facsimile drawing of the trade- 
mark, signed by the applicant or his attorney in fact, and such num- 
ber of specimens of the trademark as actually used as may be required 
by the Commissioner of Patents. 



128 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

This is in substance paragraph 2 of section 1 of the trademark law of 1881. It is, 
however, redrawn on the hnes of sections 4888 and 4889 of the Revised Statutes 
relating to applications for patents. The requirement as to description is so modified 
as to permit description to be omitted where it is obviously not necessary, as in case 
of a trademark which is so simple that it shows itself precisely what it is. The 
requirement as to drawing is in accordance with the present practice of the Patent 
Office under the Rules of Practice. Specimens of the mark as actually used are now 
required when deemed necessary by the Commissioner of Patents. 

The second paragraph of section 1 of the act of March, 1881, is as follows: 

"First. By causing to be recorded in the Patent Office a statement specifying 
name, domicile, location, and citizenship of the party applying; the class of mer- 
chandise and the particular description of goods comprised in such class to#which 
the particular trade-mark has been appropriated; a description of the trade-mark 
itself, with facsimiles thereof, and a statement of the mode in which the same is 
applied and affixed to goods, and the length of time during which the trade-mark 
has been used." 

Sections 4888 and 4889 of the Revised Statutes are as follows: 

"Sec. 4888. Before any inventor or discoverer shall receive a patent for his inven- 
tion or discovery, he shall make application therefor, in writing, to the Commissioner 
of Patents, and shall file in the Patent Office a written description of the same, and 
of the manner and process of making, constructing, compounding, and using it, in 
such full, clear, concise, and exact terms as to enable any person skilled in the art 
or science to which it appertains, or with which it is most nearly connected, to make, 
construct, compound, and use the same; and in case of a machine, he shall explain 
the principle thereof, and the best mode in which he has contemplated applying that 
principle, so as to distinguish it from other inventions; and he shall particularly 
point out and distinctly claim the part, improvement, or combination which he 
claims as his invention or discovery. The specification and claim shall be signed by 
the inventor and attested by two witnesses. 

* ' Sec. 4889. When the nature of the case admits of drawings, the applicant shall 
furnish one copy signed by the inventor or his attorney in fact, and attested by two 
witnesses, which shall be filed in the Patent Office; and a copy of the drawing to 
be furnished by the Patent Office, shall be attached to the patent as a part of the 
specification." 

The Rules of Practice relating to drawings and specimens in trademark applica- 
tions are as follows: 

"27. If for any reason a drawing does not constitute a satisfactory facsimile of the 
trade-mark, two copies of the trade-mark as actually used must be deposited in 
addition to the required drawing, to be preserved in the office for reference. 

"28. (1) The drawing must be made upon pure white paper of a thickness cor- 
responding to three-sheet Bristol board. The surface of the paper must be calen- 
dered and smooth. India ink alone must be used, to secure perfectly black and 
solid lines. 

" (2) The size of a sheet on which a drawing is made must be exactly 10 by 15 
inches. ' ' 

Sec. 3. That the application required by section 2 of this act, if 
made hj an owner of a trademark domiciled within the territor}^ of 
the United States, shall be accompanied by a written declaration veri- 
fied by the applicant that he believes himself to be the owner of the 
trademark sought to be registered and that no other person, firm, cor- 
poration, or association has a right to use such trademark, either in 
the identical form or in an}^ such near resemblance thereto as might be 
calculated to deceive ; that such trademark is used in commerce among 
the several States, or in commerce with foreign nations or with the 
Indian tribes, and that the facsimile drawing and specimens, if any, 
truly represent the trademark sought to be registered. The applica- 
tion if made by an owner of a trademark located in a foreign country 
shall be accompanied by a written declaration verified by the applicant 
that he believes himself to be the owner of the trademark sought to 
be registered; that he has registered the same or has regularly filed an 
application for registration thereof in the foreign country in which he 
is located, of which registration or application, as the case may be, he 



BILL PEOPOSED BY MINOEITY TRADEMARKS. 129 

shall state the date; that no other person, firm, corporation, or associa- 
tion has the right to use such trademark either in the identical form or 
in any such near resemblance thereto as might be calculated to deceive, 
and that the facsimile drawing and specimens, if any, truly represent 
the trademark sought to be registered. 

In case the owner of the trademark is a firm, corporation, associa- 
tion, State, or municipalit}^ the declaration may be made by a member 
of the firm or an officer of the corporation, association. State, or munic- 
ipalit}^ 

The declaration required by this section may be made before any 
person within the United States authorized by law to administer oaths, 
or, when the applicant resides in a foreign country, before any minis- 
ter, charge d'afi'aires, consul, or commercial agent holding commission 
under the Government of the United States, or before any notary 
public, judge, or magistrate having an official seal of the foreign coun- 
try in which the applicant may be. 

The first paragraph of this section is substantially the present law as found in sec- 
tion 2 of the act of March 3, 1881, which is as follows: 

"Sec. 2. That the application prescribed in the foregoing section must, in order to 
create any right whatever in favor of the party filing it, be accompanied by a written 
declaration verified by the person, or by a member of a firm, or by an officer of a 
corporation applying, to the effect that such party has at the time a right to the use 
of the trade-mark sought to be registered, and that no other person, firm, or corpor- 
ation has the right to such use, either in the identical form or in any such near resem- 
blance thereto as might be calculated to deceive; that such trade-mark is used in com- 
merce with foreign nations or Indian tribes, as above indicated; and that the 
description and facsimiles presented for registry truly represent the trade-mark sought 
to be registered." 

The second paragraph prescribes the declaration to be made by a foreign owner of a 
trademark. As the right of a foreign citizen or subject to the protection for his 
trademark is secured to him by treaty, while the right of the applicant who is domi- 
ciled in the United States to protection necessarily depends upon his use of the mark 
in such commerce as is within Congressional control, it is evident that the facts 
necessary to be shown in the one case are not the same as in the other. The require- 
ment that the foreign applicant show affirmatively that he has regularly filed an 
application for registration of his trademark in the country in which he is located is 
necessary as a. prima facie showing that he is in fact the owner of the mark. Such a 
requirement is found in the laws of nearly all foreign countries, as is recognized in 
section 13 of theact of March 3, 1881. 

While it is believed that it would be desirable to dispense with the requirement 
that an applicant for registration make oath as to the facts which entitle him to be 
considered the owner of the trademark for which he seeks registration, it does not 
appear that this can be done in view of the fact that only those trade-marks which 
are used in interstate or foreign commerce or commerce with the Indian tribes are 
within the regulating power of Congress. It therefore appears that in order to be 
entitled to registration the applicant must make a prima facie showing that he has 
satisfied the conditions necessary to bring his trademark within the class of trade- 
marks which may be registered. 

The section as drawn recognizes as entitled to registration trademarks used by 
associations. States, and municipalities, following in this respect the laws of many of 
the foreign countries as well as the laws of many of the States of the United States. 

The final paragraph of the section specifies before whom the declaration may be 
made, following in its language section 4892 of the Revised Statutes, which specifies 
before whom the oath to an application for patent may be taken, amended to pro- 
vide that in foreign countries the declaration may be made before officers other than 
notaries or United States officers. 

Sec. 4. That every applicant for the registration of a trademark 
not domiciled in the United States shall, before the issuance of the 
certificate of registration, designate by a notice in writing filed in the 
Patent Office some person residing within the United States on whom 
process or notice of proceedings affecting the right of ownership in 
the trademark of which he may claim to be the owner, brought under 



130 KEYTSIOTQ^ OF STATUTES RELATING TO PATENTS, ETC. 

the provisions of this act or under other laws of the United States, 
lua}^ be served with the same force and effect as if served upon the 
applicant or registrant in person. 

The purpose of this section is to require apphcants for registration of trademarks 
who reside out of the jurisdiction of the United States courts to place themselves con- 
structively within such jurisdiction. Being given the advantages of the laws of the 
United States so far as bringing suits against others for the protection of their rights 
to their trademarks, they should submit to the jurisdiction of the courts of the United 
States in case suits affecting their rights to their trademarks are brought against them. 

Such a provision is contained in the trademark laws of many, in fact nearly all, 
of the countries of commercial importance. 

Sec. 6. That no mark by which the goods of the person claiming to be 
the owner of the mark may be distinguished from other goods of the 
same class, shall be refused registration as a trademark on account of 
the nature of such mark, unless such mark- — 

(a) Consists of or comprises immoral or scandalous matter. 

(h) Consists of or comprises the flag or coat of arms or other insig- 
nia of the United States, or any simulation thereof, or of an}^ State 
or municipalit}^, or of any foreign nation. 

PTOvided^ That marks which are identical with a registered or known 
trademark owned and in use b}" another, and appropriate to the same 
class of merchandise, or which so nearly resemble a registered or 
known trademark owned and in use bj^ another, and appropriate to 
the same class of merchandise, as to be likeh' to cause confusion or 
mistake in the mind of the public, or to deceive purchasers, shall not 
be registered. And 

Provided^ That marks which consist merely in the name of an indi- 
vidual, firm, corporation, or association, not written, printed, impressed, 
or woven in some particular or distinctive manner, or which consist 
merely in words or devices which are descriptive of the goods with 
which they are used, or of the character or quality of such goods, or 
which consist of the name of a locality, shall not be registered, unless 
the applicant for registration states in his application that he makes 
no claim to the exclusive use of such mark as against others who may 
use the same without fraudulent or deceptive intent. 

It is the purpose of this section, as drawn, to provide for the registration of all 
marks which would or could, under the law, as construed by the Supreme Court, be 
held to be capable of being appropriated as the exclusive property of the person 
using them as trademarks. 

The first proviso recognizes the statutory bar stated in section 3 of the present 
trade-mark law in the following words : 

" But no alleged trade-mark shall be registered "^ * * which is identical with 
a registered trade-mark owned by another, and appropriate to the same class of mer- 
chandise, or which so nearly resembles some other person's trade-mark as to be 
likely to cause confusion or mistake in the mind of the public, or to deceive pur- 
chasers," 
and is intended to prevent duplication of registration. 

The second proviso is in recognition of the statement made by the Supreme Court 
in Canal Co. v. Clark (13 Wall. 311) , quoting from the opinion of Judge Duer, in the 
case of Amoskeag Mfg. Co. v. Spear, that — "(one) has no right to appropriate, a 
sign, or symbol, which, from the nature of the fact which it is used to signify, others 
may employ with equal truth, and therefore have an equal right to employ for the 
same purpose" and at the same time recognizing the right of the users of such marks 
to protection against others who make use of them without right and for the pur- 
pose of unfair competition. (See Pillsbury Washburn Mills Co. v. Eagle, 85 O. G., 
1397; Fuller ^;. Huff, 104 Fed. Rep., 141.) 

Sec. 6. That any application for registration of a trademark filed in 
this countr}^ b}^ an}" person who has previously regularly filed in any for- 
eign country which by treat3\ convention, or law affords similar privi- 



BILL PROPOSED BY MINOEITY TRADEMARKS. 131 

leges to citizens of the United States, an application for registration of 
the same trademark shall be accorded the same force and effect as would 
be accorded to the same application if filed in this country on the date 
on which application for registration of the same trademark was first 
filed in such foreign country, provided such application is filed in this 
country within four months from the date on which the application 
was first filed in such foreign country. 

This is intended to provide for giving full force and effect to article 4 of the Inter- 
national Convention, which, so far as it relates to trademarks, is as follows: 

' ' Art. 4. Anyone who shall have regularly deposited an application for a * * ^ 
trade or commercial mark in one of the contracting States shall enjoy for the purpose 
of making the deposit in the other States, and under reserve of the rights of third 
parties, a right of priority during the periods hereinafter determined. 

' ' In consequence, the deposit subsequently made in one of the other States of the 
Union before the expiration of these periods can not be invalidated by acts performed 
in the interval, especially by another deposit, ''^ * * by the employment of the 
mark. 

"The periods of priority above mentioned shall be * * * three months for 
trade or commercial marks. They shall be augmented by one month for countries 
beyond the seas." 

Sec. T. That on the filing of any application for registration of a 
trademark which complies with the requirements of sections 2 and 
3 of this act, and the pa^^ment of the fees required by this act, the 
Commissioner of Patents shall cause an examination thereof to be made; 
and if on such examination it shall appear that the applicant is entitled 
to registration under the provisions of this act, the Commissioner shall 
issue a certificate of registration therefor. 

This is drawn to correspond in terms with section 4893 of the Eevised Statutes 
relating to the examination of applications for patent, which is as follows: 

"Sec. 4893. On the filing of any such application and the payment of the fees 
required by law, the Commissioner of Patents shall cause an examination to be made 
of the alleged new invention or discovery; and if on such examination it shall appear 
that the claimant is justly entitled to a patent under the law, and that the same is 
sufficiently useful and important, the Commissioner shall issue a patent therefor." 

The only provision in the present law respecting the examination of applications 
for registration of trademarks is contained in section 3 of the act of March 3, 1881, 
and is as follows: 

' ' In an application for registration the Commissioner of Patents shall decide the 
presumptive lawfulness of claim to the alleged trade-mark. ' ' 

As above drawn this section corresponds with the present practice in regard to 
examination of trademark applications. Rule 30 of the Rules Governing the Regis- 
tration of Trade-marks prescribes this practice as follows : , 

' ' 30. All applications for registration are considered in the first instance by the 
trade-mark examiner. Whenever on examination of an application registration is 
refused for any reason whatever, the applicant will be notified thereof. The reasons 
for such rejection will be stated, and such information and references will be given 
as may be useful in aiding the applicant to judge of the propriety of prosecuting his 
application." 

Sec. 8. That whenever, on examination, an application for registra- 
tion of a trademark is refused, the Commissioner shall notify the 
applicant thereof, giving him briefly the reasons for such refusal, 
together with such information and references as ma}^ be useful in 
judging of the propriety of persisting in, modifying, or abandoning 
his application; and if, after receiving such notice, the applicant per- 
sists in his claim of right to registration, either with or without modi- 
fying his application, his application shall be reexamined. 

This is drawTi to correspond in terms with section 4903 of the Revised Statutes 
relating to the examination of applications for patent, which is as follows: 

"Sec. 4903. Whenever, on examination, any claim for a patent is rejected, the 
Commissioner shall notify the applicant thereof, giving him briefly the reasons for 



132 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

such rejection, together with such information and references as may be useful in 
judging of the propriety of renewing his appHcation or of altering his specification; 
and if, after receiving such notice, the applicant persists in his claim for a patent, 
with or without altering his specifications, the Commissioner shall order a reexami- 
nation of the case." 

There is nothing in the present trademark law corresponding with this section. 
It defines the present practice of the Patent Office. See Eule 30 of the Eules Govern- 
ing the Registration of Trade-marks, which is as follows: 

''30. All applications for registration are considered in the first instance by the 
trade-mark examiner. Whenever on examination of an application registration is 
refused for any reason whatever, the applicant will be notified thereof. The reasons 
for such rejection will be stated, and such information and references will be given 
as may be useful in aiding the applicant to judge of the propriety of prosecuting his 
application." 

Sec. 9. That upon failure of the applicant to complete his applica- 
tion for registration within one year after the filing of any part thereof, 
or upon his failure to prosecute his application within one year after 
any action therein, of which notice shall have been given to the appli- 
cant, such application shall be regarded as abandoned, unless it be 
shown to the satisfaction of the Commissioner that such delay was 
unavoidable; but the abandonment of such application shall not be con- 
strued to be an abandonment of any right to the trademark for the 
registration of which such application was made. 

The purpose of this section is to provide for clearing the files of the Patent Office 
of applications for registration which have been refused and in which no appeal has 
been taken within a reasonable time or in which the requirements of the law have 
not been complied wiih within a reasonable time after they have been pointed out 
by the Patent Office. 

Without such provision the files of the Patent Office will become, and in fact are 
already, choked with an accumulation of applications which, though practically 
abandoned, must, under the law, be considered as pending. 

This section corresponds in terms with section 4894 of the Revised Statutes relating 
to applications for patent, which is as follows: 

' ' 4894. All applications for patents shall be completed and prepared for examina- 
tion within two years after the filing of the application, and in default thereof, or 
upon failure of the applicant to prosecute the same within two years after any action 
therein, of which notice shall have been given to the applicant, they shall be regarded 
as abandoned by the parties thereto, unless it be shown to the satisfaction of the 
Commissioner of Patents that such delay was unavoidable." 

By the last part of this section the distinction is recognized between the right to 
register, which, with the benefits arising from registration, is created by statute, and 
the right of ownership in a trademark, which accrues under the common law and 
exists independent of registration. 

Sec. 10. That whenever application is made for the registration of 
a trademark which is substantially identical with a trademark appro- 
priated to the same class of goods for which a certificate of registra- 
tion has been previously issued to another, and is still in force, or for 
registration of which another has previously made application, or 
which so nearly resembles such trademark as, in the opinion of the 
Commissioner, to be likely to be mistaken therefor by the public, and 
the applicant shall show to the satisfaction of the Commissioner that 
he used the trademark of his application prior to the date of filing of 
the application on which such previous registration was granted, or 
the date of filing of such prior application, as the case may be, or 
shall show to the satisfaction of the Commissioner that the registrant 
or prior applicant has abandoned the use of such trademark, the 
Commissioner shall suspend such later application and give notice 
thereof to the registrant or prior applicant, as the case may be. If 
within such time, not less than thirty days from such notice as the 
Commissioner shall prescribe, the registrant or prior applicant files in 



BILL PEOPOSED BY MINOEITY TRADEMAEKS. 133 

the Patent Office notice of opposition to the grant of such application, 
stating the reasons therefor, the Commissioner shall declare that an 
interference exists as to such trademark and shall direct examiner in 
charge of interferences to determine the question of ownership of 
such trademark. And the Commissioner may issue a certificate of 
registration to the party who is adjudged to be the owner of the trade- 
mark, unless the adverse party appeals from the decision of the 
examiner in charge of interferences within such time, not less than 
twenty days, as the Commissioner shall prescribe. If the registrant 
or prior applicant, after due notice, shall fail to file notice of opposi- 
tion within thirty days, the Commissioner may issue a certificate of 
registration to the later applicant. 

In so far as the practice prescribed by this section differs from the present practice 
of the Patent Office, it is intended to faciUtate the registration by the later appHcant, 
in cases in which a registrant or prior apphcant has ceased to claim an exclusive right 
in the mark. 

The only provision in the present law with reference to interferences in respect 
to trade-marks is found in section 3 of the act of March 3, 1881, and is as follows: 

" In an application for registration the Commissioner of Patents shall decide the 
presumptive lawfulness of claim to the alleged trade-mark; and in any dispute 
between an applicant and a previous registrant, or between applicants, he shall fol- 
low, so far as the same may be applicable, the practice of courts of equity of the 
United States in analogous cases." _ 

So far as declaration and determination of interferences is concerned, this section 
is merely declaratory of the present practice in the Patent Office as defined in rule 
37 of the Rules Governing the Registration of Trade-marks, which is as follows: 

* ' 37. In case of conflicting applications for registration, or in any dispute as to the 
right to use which may arise between an applicant and a prior registrant, the office 
will declare an interference, in order that the parties may have an opportunity to 
prove priority of use and the proceedings on such interference will follow, as nearly 
as practicable, the practice in interferences upon applications for patents." 

Sec. 11. That every applicant for the registration of a trademark 
or for the renewal of the registration of a trademark whose applica- 
tion has been twice refused, and every party to an interference as to a 
trademark, may appeal from the decision of the examiner in charge 
of trademarks, or of the examiner in charge of interferences, as the 
case may be, to the Commissioner in person, having once paid the fee 
for such appeal. 

This corresponds in terms with sections 4909 and 4910 of the Revised Statutes 
relating to appeals in applications for patent, which are as follows : 

* ' Sec. 4909. Every applicant for a patent or for the reissue of a patent, any of the 
claims of which have been twice rejected, and every party to an interference, may 
appeal from the decision of the primary examiner, or of the examiner in charge of 
interferences in such case, to the board of examiners in chief; having once paid the 
fee for such appeal. 

''Sec. 4910. If such party is dissatisfied with the decision of the examiners in 
chief, he may, on payment of the fee prescribed, appeal to the Commissioner in 
person." 

This section provides for an appeal direct to the Commissioner instead of to the 
examiners in chief and from them to the Commissioner, as provided in the law 
relating to appeals in applications for patent. Except that it requires a fee for 
appeals, it is merely declaratory of the present practice as defined in rule 38 of the 
Rules Governing the Registration of Trade-marks, which is as follows: 

"38. From an adverse decision of the examiner of trade-marks upon an appli- 
cant's right to register a trade-mark, or upon any interlocutory matter, or from a 
decision of the examiner of interferences, the case will be reviewed by the Commis- 
sioner, on petition or appeal, without fee." 

Sec. 12. That if an applicant for registration of a trademark, or 
such party to an interference as to a trademark, is dissatisfied with 
the decision of the Commissioner of Patents he may appeal to the 
court of appeals of the District of Columbia on complying with the 



134 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

conditions required in case of an appeal from the decision of the Com- 
missioner b}^ an applicant for patent or a party to an interference as 
to an invention. 

This section corresponds in terms with section 4911 of the Revised Statutes relat- 
ing to appeals from the decision of the Commissioner of Patents in applications for 
patent as modified by the act of February 9, 1893, creating the court of appeals of 
the District of Columbia: 

"Sec. 4911. If such party, except a party to an interference, is dissatisfied with 
the decision of the Commissioner, he may appeal to the Supreme Court of the Dis- 
trict of Columbia, sitting in banc. ' ' 

"R. S. U. S., Sup., vol. 2, c. 74, Feb. 9, 1893. Be it enacted, etc., That there shall 
be, and there is hereby, established in the District of Columbia a court, to be known 
as the court of appeals of the District of Columbia. * ■* * 

" Sec. 9. That the determination of appeals from the decision of the Commissioner 
of Patents, now vested in the general term of the supreme court of the District of 
Columbia, in pursuance of the provisions of section seven hundred and eighty of the 
Revised Statutes of the United States, relating to the District of Columbia shall 
hereafter be and the same is hereby vested in the court of appeals created by this 
act; and in addition, any party aggrieved by a decision of the Commissioner of Pat- 
ents in any interference case may appeal therefrom to said court of appeals." 

The present law does not provide for an appeal from the decision of the Commis- 
sioner of Patents in trademark cases. As such cases often involve interests quite 
as valuable as are involved in applications for patent, it would seem that appeals if 
provided for in the one class of cases should be provided for in the other class. 

Sec. 13. That the Commissioner of Patents is authorized to record 
in the Patent Office the transfer of the propert}^ right in any regis- 
tered trademark, or in an}^ trademark for which application for 
registration has been made. But no such transfer of a trademark 
shall be recorded unless it shall appear that such transfer was made 
with, or as a part of, a transfer of the good will of the business in which 
such trademark was used. Any transfer of the good will of the busi- 
ness in which a particular trademark is used shall be deemed a trans- 
fer of such trademark, and shall be so recorded unless the parties 
thereto expressly stipulate to the contrar3\ 

Section 12 of the present law authorizes the Commissioner to record transfers 
of the right to use trademarks. This is as follows: 

' ' Sec. 12. That the Commissioner of Patents is authorized to make rules and reg- 
ulations and prescribe forms for the transfer of the right to use trade-marks and for 
recording such transfers in his office." 

This recording is provided for in rule 43 of the Rules Governing the Registration 
of Trade-marks, which is as follows : 

' ' Sec. 43. The right to the use of any trade-mark is assignable by an instrument in 
writing, and provision is made for recording such instrument in the Patent Office. 
But no such instrument or conveyance will be recorded unless it is in the English 
language, and unless an application for the registration of a trade-mark shall have 
first been filed in the Patent Office, and such instrument must identify the applica- 
tion by serial number and date of filing, or, where the mark has been registered, by 
its certificate number and the date thereof. No particular form of instrument is 
prescribed." 

There is no restriction upon such transfers in the present law. But it is well set- 
tled that the property right to a trademark is not transferable except with the trans- 
fer of the right to manufacture or sell the particular merchandise to which the 
trademark has been attached. (See Filkins ?•. Blackman, 13 Blatchford, 440, quot- 
ing Dixon Crucible Company v. Guggenheim, Am. Trademark Cases, 559. ) 

That the transfer of the good will of the business carries with it the transfer of the 
trademark used in 'connection with it, unless expressly stipulated to the contrary, is 
also well established. (See Pepper v. Labrot, 8 Fed. Rep., 29.) 

This section as drawn is merely declaratory of the present law as determined by 
the courts. 

The law of Great Britain provides (sec. 70, Patents, etc., acts 1883-1888) that — 

"A trade-mark, when registered, shall be assigned and transmitted only in connec- 
tion with the good will of the business concerned in the particular goods or classes of 
goods for which it has been registered, and shall be determinable with that goodwill." 



BILL PEOPOSED BY MINOEITY TEADEMARKS. 135 

Sec. ltd. That certificates of registration of trademarks shall be 
issued in the name of the United States of America, under the seal of 
the Patent Office, and shall be signed by the Commissioner of Patents, 
and a record thereof, together with printed copies of the drawing, 
statement of the applicant, and description, if any, shall be kept in 
books for that purpose. The certificate shall state the date on which 
the application for registration was deposited in the Patent Office. 
Certificates of registration of trademarks may be issued to the assignee 
of the applicant; but the assignment must first be entered of record in 
the Patent Office. Written or printed copies of any records, books, 
papers, or drawings, relating to trademarks, belonging to the Patent 
Office, and of certificates of registration, authenticated by the seal of 
the Patent Office and certified b}^ the Commissioner or Acting Com- 
missioner thereof, shall be evidence in all cases wherein the originals 
could be evidence; and any person making application therefor and 
paying the fee required by law shall have certified copies thereof. 

Section 4 of the present trademark law is as follows: 

*'Sec. 4. That certificates of registry of trade-marks shall be issued in the name of 
the United States of America, under the seal of the Department of the Interior, and 
shall be signed by the Commissioner of Patents, and a record thereof, together with 
printed copies of' the specifications, shall be kept in books for that purpose. Copies 
of trade-marks and of statements and declarations filed therewith, and certificates of 
registry so signed and sealed shall be evidence in any suit in which such trade-marks 
shall be brought into controversy." 

The words ''seal of the Department of the Interior" have been changed to "seal 
of the Patent Office." Patents are issued under the seal of the Patent Office and 
signed by the Secretary of the Interior and by the Commissioner of Patents (Rev. 
Stat., sec. 4883), while under the present law certificates of registry of trademarks 
are signed by the Commissioner only and bear the seal, not of the Patent Office, 
which is under his control, but the seal of the Department of the Interior. Evidently 
this should be corrected. 

The provision that certificates shall state the date of application is merely declara- 
tory of the present practice. The provision with respect to issuance of the certificate 
to the assignee of record, is in accord with the following pro\dsions of the law relating 
to patents. 

' ' Sec. 4895. Patents may be granted and issued or reissued to the assignee of the 
inventor or discoverer; but the assignment must first be entered of record in the 
Patent Office." 

The last sentence of this section is draw^n to correspond in terms with the provision 
of section 892 of the Revised Statutes, in reference to certified copies of the records 
of the Patent Office. This is as follows: 

' ' Sec. 892. "Written or printed copies of any records, books, papers, or drawings 
belonging to the Patent Office, and of letters patent authenticated by the seal and 
certified by the Commissioner or Acting Commissioner thereof, shall be evidence in 
all cases wherein the originals could be evidence; and any person making application 
therefor and paying the fee required by law shall have certified copies thereof. ' ' 

Sec. 15. That a certificate of registration shall remain in force for 
ten years, except that in case of trademarks previously registered in 
a foreign country, such certificate shall cease to be in force on the 
date on which the trademark ceases to be protected in such foreign 
country and shall in no case remain in force more than ten 3^ears, unless 
renewed. Certificates of registration may be, from time to time, 
renewed for like periods on payment of the renewal fees required by 
this act, upon request by the registrant, his legal representatives or 
transferees of record in the Patent Office, provided such request is 
made prior to the expiration of the term for which the certificates of 
registration were issued or renewed. Certificates of registration in 
force at the date at which this act takes effect shall remain in force 
for the term for which the}^ were issued, but shall be renewable on the 

S. Doc. 20 10* 



136 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

same conditions and for the same periods as certificates issued under 
the provisions of this act, and when so renewed shall have the same 
force and effect as certificates issued under this act. 

Section 5 of the present trademark law is as follows: 

"Sec. 5. That a certificate of registry shall remain in force for thirty years from 
its date, except in cases where the trade-mark is claimed for and applied to articles 
not manufactured in this country, and in which it receives protection under the laws 
of a foreign country for a shorter period, in which case it shall cease to have any 
force in this country by virtue of this act at the time that such trade-mark ceases to 
be exclusive property elsewhere. At any time during the six months prior to the 
expiration of the term of thirty years, such registration may be renewed on the same 
terms and for a like period." 

The change in the term is coupled with a reduction of the fee for registration, from 
$25 to $10, with a fee of $5 for renewal. (See sec. 16.) The term of years is the 
term for which registration is granted in most countries, with, of course, the right 
to renewal from time to time, as long as the registrant continues to claim an exclusive 
right in the mark. Failure to renew registration is, in foreign countries, taken to 
mean abandonment of the claim of right to the mark. While failure to renew need 
not be taken as abandonment of whatever rights the registrant may have under the 
common law, it should be taken as an abandonment of whatever rights may accrue 
from registration. Many trademarks are, as a matter of fact, abandoned within a 
few years after their first adoption, and it is believed to be in the interest of the 
public that marks which have thus ceased to be the subject of a claim of exclusive 
right should be dropped from the register within a much shorter period than the 
thirty years for which certificates of registration are granted under the present law. 

The provision with respect to trademarks previously registered in a foreign 
country, is substantially the same in effect as the provision contained in the section 
of the present law above quoted. The right of foreign trademark owners to the 
benefits of the laws of the United States rests on treaty agreements, and it is expressly 
stipulated in many of these treaties that trademarks shall cease to be protected here 
when they cease to be exclusive property in the country in which they originate. 
Substantially the same provision is contained in the trademark laws of most foreign 
countries. 

The final sentence of this section preserves whatever rights are secured by certifi- 
cates of registration now in force, but there is nothing in this or any section of this 
proposed act to prevent the owner of a trademark registered under the present law 
from registering under this act, and thereby securing the advantages provided for 
therein. 

Sec. 16. That the following shall be the rates for trademark fees: 

On filing each original application for registration of a trademark, 
ten dollars. 

On filing each application for renewal of registration of a trade- 
mark, ^ye dollars. 

On an appeal for the first time from the examiner in charge of 
trademarks to the Commissioner of Patents, ten dollars. 

On an appeal for the first time from the decision of the examiner in 
charge of interferences, awarding ownership of a trademark, to the 
Commissioner of Patents, fifteen dollars. 

For certified and uncertified copies of certificates of registration and 
other papers, and for recording transfers and other papers, the same 
fees as required by law for such copies of patents and for recording 
assignments and other papers relating to patents. 

This is drawn to correspond in terms with section 4934 of the Revised Statutes pre- 
scribing patent fees, which is as follows: 

"Sec. 4934. The following shall be the rates for patent fees: 

*'0n filing each original application for a patent, except in design cases, fifteen 
dollars. 

''On issuing each original patent, except in design cases, twenty dollars. 

*'In design cases: For three years and six months, ten dollars; for seven years, fif- 
teen dollars; for fourteen years, thirty dollars. 

' * On filing each caveat, ten dollars. 



BILL PROPOSED BY MINORITY TRADEMARKS. 137 

"On every application for the reissue of a patent, thirty dollars. 

"On filing each disclaimer, ten dollars. 
* ^ * * * * * 

* ' On an appeal for the first time from the primary examiners to the examiners-in- 
chief, ten dollars. 

"On every appeal from the examiners-in-chief to the Commissioner, twenty dollars. 

' * For certified copies of patents and other papers, including certified printed copies, 
ten cents per hundred words. 

"For recording every assignment, agreement, power of attorney, or other paper, 
of three hundred words or under, one dollar; of over three hundred and under one 
thousand words, two dollars; of over one thousand words, three dollars. 

"For copies of drawings, the reasonable cost of making them." 

The fee required for registration under the present law is |25, as stated in the third 
paragraph of section 1 of the act of March 3, 1881, which states as a requirement for 
registration as follows: 

"Second. By paying into the Treasury of the United States the sum of tw^enty- 
five dollars, and complying with such regulations as may be prescribed by the Com- 
missioner of Patents." 

A fee of $25 is excessive, and is virtually a tax upon registrants. The fee of $10 is 
ample to cover the expenses of examination of the application and issuance of the 
certificate of registration in all cases in which no appeal is taken. With the fee 
placed at |10, registration would be more generally sought, and a much more nearly 
complete registration of all trademarks in use would be secured. As this is one of 
the principal purposes of a registration law, the reduction of the fee seems to be 
clearly necessary. 

The present law does not require a fee for appeal to the Commissioner. In fact it 
does not provide for an appeal. The rules governing the registration of trademarks, 
however, provide for such appeal. Rule 38 is as follows: 

"38. From an adverse decision of the examiner of trade-marks upon an appli- 
cant's right to register a trade-mark, or upon any interlocutory matter, or from a 
decision of the examiner of interferences, the case will be reviewed by the Commis- 
sioner, on petition or appeal, without fee." 

The wisdom of requiring a reasonable fee for appeal, in view of the work involved, 
particularly in view of the reduction of the registration fee, hardly needs demon- 
stration. Ner does it seem open to question that the fee in interference cases should 
be somewhat larger than in exparte appeals from the decision of the examiner in 
charge of trademarks. 

So far as the fees for copies and recording are concerned, this section is merely 
declaratory of the present practice. See rule 47 of the rules governing the regis- 
tration of trademarks, which is as follows: 

"47. On filing an application for registration of a trade-mark $25. 00 

For abstract of title: 

For the certificate of search 1. 00 

For each brief from the digests of assignments 20 

For copies of matter in any foreign language, for every 100 words or 

fraction thereof 10 

For translation, for every 100 words or fraction thereof 50 

For recording every assignment, agreement, power of attorney, or other 

paper, of 300 words or less 1. 00 

For recording every assignment, agreement, power of attorney, or other 

paper of more than 300 words and less than 1,000 words 2. 00 

For recording every assignment, agreement, power of attorney, or other 

paper of more than 1,000 words 3. 00 

For assistance to attorneys and others in the examination of records, one 

hour or' less 50 

Each additional hour or fraction thereof 50 

For single printed copy of statement, declaration, and facsimile 05 

If certified, for the certificate, additional 25 

Sec. 17. Sections forty-nine hundred and thirty-five and forty-nine 
hundred and thirty-six, relating to the payment of patent fees and to 
the repayment of fees paid by mistake, are hereby made applicable to 
trademark fees. 

The sections referred to are as follows: 

"Sec. 4935. Patent fees maybe paid to the Commissioner of Patents, or to the 
Treasurer, or any of the assistant treasurers of the United States, or to any of the 
designated depositaries, national banks, or receivers of public money, designated by 



138 REVISION OF STATUTES RELATIIS^G TO PATENTS, ETC. 



the Secretary of the Treasury for that purpose; and such officer shall give the deposi- 
tor a receipt or certificate of deposit therefor. All money received at the Patent 
Office, for any purpose, or from any source whatever, shall be paid into the Treasury 
as received, without any deduction whatever. 

*'Sec. 4936. The Treasurer of the United States is authorized to pay back any sum 
or sums of money to any person who has through mistake paid the same into the 
Treasury, or to any receiver or depositary, to the credit of the Treasury, as for fees 
accruing at the Patent Office, upon a certificate thereof being made to the Treasurer 
by the Commissioner of Patents." 

This section is merely declaratory of what is understood to be the present law. 
See rules 49 and 51 of the Rules Governing the Registration of Trade-marks, which 
are as follows: 

* ' 49. Money required for office fees may be paid to the Commissioner or to the 
Treasurer, or any of the assistant treasurers of the United States, or to any of the 
depositaries, national banks, or receivers of public money designated by the Secretary 
of the Treasury for that purpose, who shall give the depositor a receipt or certificate 
of deposit therefor, which shall be transmitted to the Patent Office. When this can 
not be done without inconvenience, the money may be remitted by mail, and in 
every such case the letter should state the exact amount inclosed. All money orders 
should be made payable to the ' Commissioner of Patents. ' 

"51. Money paid by actual mistake, such as a payment in excess, or when not 
required by law, or by neglect or misinformation on the part of the office, will be 
refunded; but a mere change of purpose after the payment of money, as when a party 
desires to withdraw his application for the registration of a trade-mark, will not 
entitle a party to demand such a return." 

Sec. 18. That the Commissioner of Patents may from time to time 
establish regulations not inconsistent with law for the conduct of pro- 
ceedings in reference to the registration of trademarks provided for 
by this act. 

Authority for the rules governing the registration of trademarks which are issued 
by the Commissioner of Patents is contained in the third paragraph of section 1 of 
the act of March 3, 1881, which states as a requirement for registration the following: 

"Second. By paying into the Treasury of the United States the sum of twenty-five 
dollars, and complying with such regulations as may be prescribed by the Commis- 
sioner of Patents." 

The above section is drawn to correspond in terms with section 483 of the Revised 
Statutes giving the Commissioner authority to prescribe regulations for proceedings 
in the Patent Office. This is as follows: 

"Sec. 483. The Commissioner of Patents, subject to the approval of the Secretary 
of the Interior, may from time to time establish regulations, not incosistent with law, 
for the conduct of proceedings in the Patent Office. ' ' 

Sec. 19. That registration of a trademark shall be legal notice of 
claim of ownership therein by the registrant. Any person who shall 
reproduce, counterfeit, copy, or colorably imitate any trademark 
registered under this act, and affix the same to merchandise of sub- 
stantially the same descriptive properties as those described in the 
registration, or shall sell or expose for sale or have in possession for 
purposes of sale merchandise of substantially the same descriptive 
properties as those described in the registration bearing, without 
authority from the owner thereof, a reproduction, counterfeit, copy, 
or colorable imitation of any such trademark, shall be liable to an 
action on the case for damages for the wrongful use of said trademark 
at the suit of the owner thereof; and whenever in an}^ such action a 
verdict is rendered for the plaintiff, the court may enter judgment 
thereon for any sum above the amount found by the verdict as the 
actual damages sustained, according to the circumstances of the case, 
not exceeding three times the amount of such verdict, together with 
the costs. 

Section 7 of the present trademark law is as follows: 

"Sec. 7. That registration of a trade-mark shall he prima facie evidence of owner- 
ship. Any person who shall reproduce, counterfeit, copy, or colorably imitate any 



BILL PROPOSED BY MINORITY TRADEMARKS, 139 

trade-mark registered under this act and affix the same to merchandise of substan- 
tially the same descriptive properties as those described in the registration shall be 
liable to an action on the case for damages for the wrongful use of said trade-mark 
at the suit of the owner thereof; and the party aggrieved shall also have his remedy 
according to the course of equity to enjoin the wrongful use of such trade-mark used 
in foreign commerce or commerce with Indian tribes, as aforesaid, and to recover 
compensation therefor, in any court having jurisdiction over the person guilty of such 
wrongful act; and courts of the United States shall have original and appellate juris- 
diction in such cases without regard to the amount in controversy." 

The section is modified to make registration legal notice of the claim of ownership 
therein instead of prima facie evidence of ownership as provided by the present law. 
As it is believed that the law should be declaratory of rights acquired under the 
common law and should not make registration the basis of the right of ownership in 
the mark, it seems clear that registration granted on a merely ex parte showing can 
not properly be even prima facie evidence of the fact of ownership. The owner of a 
trademark who gives legal notice to all the world that he claims such trademark as 
his own may properly be entitled to advantages by reason of such notice which the 
trademark owner who does not register his mark should not have. 

The section is modified to prove specifically that the owner of a registered trade- 
mark may enforce his right to its exclusive use against any person who without right 
makes use of that mark, whether such person be the manufacturer who affixes the 
mark to the goods or the trader who subsequently distributes the goods bearing the 
false mark to the consumers. The one is as much an infringer as the other and there 
should be no doubt as to the right of the owner of the mark to proceed against either 
the infringing manufacturer or the infringing trader or both, as he may choose. 

The provisions respecting the power of the court to increase damages is drawn in 
accordance with section 4919 of the Eevised Statutes, relating to patents, which is as 
follows: 

' 'Sec. 4919. Damages for the infringement of any patent may be recovered by action 
on the case, in the name of the party interested either as patentee, assignee, or grantee. 
And whenever in any such action a verdict is rendered for the plaintifl[, the court 
may enter judgment thereon for any sum above the amount found by the verdict as 
the actual damages sustained, according to the circumstances of the case, not exceed- 
ing three times the amount of such verdict, together with the costs." 

These provisions are made applicable only to registered trademarks for the purpose 
and with the intent of inducing the general registration of trademarks now in use or 
which may hereafter be used by affording to owners of trademarks, who by comply- 
ing with the conditions of this act give notice to others of their claim of right in their 
trademarks, a protection not given to unregistered marks. Compare the copyright 
law under which an author is so far required to give notice of his claim of right that 
without such notice in strict conformity with the law he is without the right to bring 
suit in the courts. Compare also the patent law under which the right of an inventor 
to make, use, and vend his invention can not be enforced in the courts unless he has, 
by the filing of an application on which a patent has been granted, given notice to 
others of his claim of right in his invention. 

The clause of section 7 of the present trademark law by which the party aggrieved 
is given his remedy in equity is embodied in section 21 of this act and the clause by 
which jurisdiction is conferred on the United States courts is embodied in section 20 
of this act. 

The other changes in the section are made in the interest of clearness. 

Sec. 20. That the circuit courts of the United States shall have 
original jurisdiction, and the circuit courts of appeal of the United 
States, the court of appeals of the District of Columbia, and the 
Supreme Court shall have appellate jurisdiction of all suits at law or 
in equity respecting- trademarks registered in accordance with the 
provisions of this act, arising under the present act or under any laws 
of the United States in reference to trademarks, without regard to 
the amount in controversy, except that such courts shall not have 
jurisdiction of such suits between citizens of the same State, unless it 
appears that the defendant uses the registered trademark involved in 
the suit on merchandise intended to be transported to another State or 
beyond the boundaries of the State of which the parties are citizens. 

Section 7 of the trademark law of March 3, 1881, provides that ''courts of the 
United States shall have original and appellate jurisdiction without regard to the 



140 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

amount in controversy," in cases in which trademarks registered under the act of 
March 3, 1881, are involved. 

The proposed section is intended to more clearly define the jurisdiction conferred 
upon the United States courts by the present law, and particularly to avoid any ques- 
tion of constitutionality. It will be understood that so far as concerns controversies 
arising between citizens of different States, or between aliens and citizens, the section 
confers no jurisdiction that is not conferred in express terms by the Constitution 
(Art. Ill, sec. 2), but provides that the amount in controversy shall not affect juris- 
diction. With respect to controversies arising between citizens of the same State, 
jurisdiction is conferred by this section upon the United States only in cases in which 
the right to a registered trademark is involved between parties who are engaged in 
interstate or foreign commerce in the goods to which the trademark in controversy 
is applied. As to what constitutes interstate or foreign commerce, see the decision 
of the Supreme Court in Addyston Pipe & Steel Co. v. U. S. (175 U. S., 211). 

Sec. 21. That the several courts vested with jurisdiction of cases 
arising under the present act or under any laws of the United States in 
reference to trademarks shall have power to grant injunctions according 
to the course and principles of equity to prevent the violation of any 
right of the owner of a trademark registered under this act, on such 
terms as the court may deem reasonable; and upon a decree being 
rendered in any such case for wrongful use of a registered trademark, 
the complainant shall be entitled to recover, in addition to the profits 
to be accounted for hj the defendant, the damages the complainant 
has sustained thereby ; and the court shall assess the same or cause the 
same to be assessed under its direction. And the court shall have the 
same power to increase such damages, in its discretion, as is given to 
increase the damages found by verdicts in actions in the nature of 
actions of trespass upon the case. 

This action corresponds in terms with section 4921 of the Revised Statutes relating 
to patent cases, which is as follows: 

"Sec. 4921. The several courts vested with jurisdiction of cases arising under the 
patent laws shall have power to grant injunctions according to the course and prin- 
ciples of courts of equity, to prevent the violation of any right secured by patent, on 
such terms as the court may deem reasonable; and upon a decree being rendered in 
any such case for an infringement, the complainant shall be entitled to recover, in 
addition to the profits to be accounted for by the defendant, the damages the com- 
plainant has sustained thereby; and the court shall assess the same or cause the same 
to be assessed under its direction. And the court shall have the same power to 
increase such damages, in its discretion, as is given to increase the damages found by 
verdicts in actions in the nature of actions of trespass upon the case. ' ' 

Sec. 22. That in any case involving the right to a trademark regis- 
tered in accordance with the provisions of this act, in which a verdict 
has been found for the plaintiff, or an injunction issued, the court 
may order that all labels, prints, packages, wrappers, or receptacles 
in the possession of the defendant bearing the trademark of the 
plaintiff* or complainant, or any reproduction, counterfeit, or colorable 
imitation thereof, shall be delivered up and destroyed. Any injunc- 
tion that may be granted, upon hearing after notice to the defendant, 
to prevent the violation of any right of the owner of a trademark 
registered in accordance with the provisions of this act, by any cir- 
cuit court of the United States, or by a judge thereof, may be served 
on the parties against whom such injunction may be granted anywhere 
in the United States, and shall be operative and may be enforced by 
proceedings to punish for contempt or otherwise by the circuit court 
by which such injunction was granted, or by any other circuit court 
or judge thereof in the United States. The circuit courts or judges 
thereof shall have jurisdiction to enforce said injunction, as herein 
provided, as fully as if the injunction had been granted in the circuit 
in which it is sought to be enforced. 



BILL PROPOSED BY MH^ORITY— TI^ADEMARKS. 141 

The clerk of the court or judge granting the injunction shall, when 
required to so do by the court before which application to enforce 
said injunction is made, transmit without delay to said court a certi- 
fied cop3^ of all the papers on which the said injunction was granted 
that are on file in his office. 

The provisions of this section under which an injunction granted in any circuit 
court may be enforced wherever the defendant may be found is taken from the 
present law relating to copyrights, which provides as follows in section 4966, as 
amended by the act approved January 6, 1897: 

"Any injunction that may be granted upon hearing after notice to the defendant 
by any circuit court of the United States, or by a judge thereof, restraining and 
enjoining the performance or representation of any such dramatic or musical compo- 
sition may be served on the parties against w^hom such injunction may be granted 
anywhere in the United States, and shall be operative and may be enforced by pro- 
ceedings to punish for contempt or otherwise by any other circuit court or judge in 
the United States; but the defendants in said action, or any or either of them, may 
make a motion in any other circuit in which he or they may be engaged in perform- 
ing or representing said dramatic or musical composition to dissolve or set aside the 
said injunction upon such reasonable notice to the plaintiff as the circuit court or the 
judge before whom said motion shall be made shall deem proper; service of said 
motion to be made on the plaintiff in person or on his attorneys in the action. The 
circuit courts or judges thereof shall have jurisdiction to enforce said injunction and 
to hear and determine a motion to dissolve the same, as herein provided, as fully as 
if the action w^ere pending or brought in the circuit in which said motion is made. 

"The clerk of the court, or judge granting the injunction, shall, when required so 
to do by the court hearing the application to dissolve or enforce said injunction, 
transmit without delay to said court a certified copy of all the papers on which the 
said injunction w^as granted that are on file in his ofiice." 

Sec. 23. That no action or suit shall be maintained under the pro- 
vision of this act in any case when the trademark is used in any unlaw- 
ful business or upon any article injurious in itself, or which mark has 
been used with the design of deceiving the public in the purchase of 
merchandise, or under any certificate of registration fraudulently 
obtained. 

This is section 8 of the present trademark law without change: 
"Sec. 8. That no action or suit shall be maintained under the provisions of this act 
in any case when the trade-mark is used in any unlawful business or upon any arti- 
cle injurious in itself, or which mark has been used with the design of deceiving 
the public in the purchase of merchandise, or under any certificate of registry 
fraudulently obtained." 

Sec. 21. That nothing in this act shall prevent, lessen, impeach, or 
avoid any remedy at law or in equity which any party aggrieved by 
any wrongful use of any trade or other mark, commercial name, or 
indication of locality of origin, might have had if the provisions of 
this act had not been passed. 

Section 10 of the act of March 3, 1881, is as follows: 

"Sec. 10. That nothing in this act shall prevent, lessen, impeach, or avoid any 
remedy at law or in equity w^hich any party aggrieved by any wrongful use of any 
trade-mark might have had if the provisions of this act had not been passed." 

The purpose of this section, as above drawn, is to provide that the user of a desig- 
nating mark, whether such mark is a trademark in the technical sense registrable 
under the provisions of this act or is a personal commercial name or a geographical 
name, may continue to have such remedy against those who make use of such mark 
with fraudulent intent as is given by the courts under the common law under the 
doctrine of unfair competition, whether such mark has been registered or not, and 
to provide that the courts of the United States shall continue to have such jurisdic- 
tion as they now have to afford under the so-called commmon law of trademarks 
such remedy at law or in equity for the wrongful use of any trademark irrespective 
of its registration as they now give. 

Sec. 25. That nothing contained in this act shall prevent the regis- 
tration as a trademark of any word or words, letter, figure, or com- 



142 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

bination of letters or figures used as a trademark in commerce among 
the several States or in commerce with foreign nations, or with the 
Indian tribes before the third day of March, eighteen hundred and 
eight3^-one, and which has distinguished the goods of the applicant or 
his predecessor in business. 

The above section is intended to cover substantially the same ground that is covered 
by the act of August 5, 1882, which is as follows: 

"That nothing contained in the law entitled 'An act to authorize the registration 
of trade-marks and protect the same, ' approved March third, eighteen hundred and 
eighty-one, shall prevent the registry of any lawful trade-mark rightfully used by the 
applicant in foreign commerce or commerce with Indian tribes at the time of the 
passage of said act." 

This act is similar to, and no doubt was suggested by, the provisions of the British 
trade-mark law in reference to what are known as ''old marks;" that is, marks in 
use prior to the date of the passage of the first law which provided for registration of 
trade-marks and defined what should be registrable as trademarks. This provision 
is found in section 64 of the Patents, etc., Acts, 1883-1888, and is as follows: 

' ' (3) Provided as follows: 

^ ^ * * ¥r * * 

' ' (n) Any special and distinctive word or words, letter, figure, or combination of 
letters or figures or of letters and figures, used as a trade-mark before the thirteenth 
day of August, one thousand eight hundred and seventy-five, may be registered as a 
trade-mark under this part of this act. ' ' 

This is in recognition of the fact that by long-continued use in public a mark which 
at the date of its adoption might be open to objection as being descriptive or geograph- 
ical or otherwise not so far arbitrary or fanciful as to be capable at once of exclusive 
appropriation, may become known to the public as the distinctive mark of its user, 
and has therefore come to be of value to him, and of the necessity in the interests of 
fair competition in trade of giving to such ' ' old marks ' ' the protection given to marks 
which are technically trademarks. Without such a provision, such marks not being 
registrable in this country would not be registrable in the foreign countries which 
require registration here as a condition precedent to protection there, and such 
requirement is made by the laws of most foreign countries. 

Sec. 26. That no article of imported merchandise which shall copy 
or simulate the name of any domestic manufacture or manufacturer 
or trader, or of any manufacturer or trader located in any foreign 
country, which by treaty, convention, or law, affords similar privileges 
to citizens of the United States, or which shall copy or simulate a 
trademark registered in accordance with the provisions of this act, or 
shall bear a name or mark calculated to induce the public to believe 
that the article is manufactured in the United States, or that it is man- 
ufactured in any foreign country or locality other than the country in 
which it is in fact manufactured, shall be admitted to entr}^ at any cus- 
tom-house of the United States. And in order to aid the officers of 
the customs in enforcing this prohibition any domestic manufacturer 
or trader, and any foreign manufacturer or trader who is entitled 
under the provisions of a treat}^, convention, declaration, or agreement 
between the United States and any foreign country, to the advantages 
accorded by law to citizens of the United States, in respect to trade or 
commercial marks, and commercial names, may require his name and 
residence, and name or mark of the locality in which his goods are 
manufactured, and a copy of the certificate of registration of his trade- 
mark issued in accordance with the provisions of this act, to be re- 
corded in books which shall be kept for this purpose in the Depart- 
ment of the Treasury, under such regulations as the Secretary of the 
Treasury shall prescribe, and may furnish to the Department facsimiles 
of his name, the name or mark of the locality in which his goods are 
manufactured, or of his registered trademark; and thereupon the Sec- 
retary of the Treasury shall cause one or more copies of the same to 
be transmitted to each collector or other proper officer of the customs. 



BILL PROPOSED BY MINORITY TRADEMARKS. 143 

Section 11 of the act of July 24, 1897, is as follows: 

"Sec. 11. That no article of imported merchandise which shall copy or simulate 
the name or trade-mark of any domestic manufacture or manufacturer, or which shall 
bear a name or mark which is calculated to induce the public to believe that the article 
is manufactured in the United States, shall be admitted to entry at any custom-house 
of the United States. And in order to aid the officers of the customs in enforcing 
this prohibition, any domestic manufacturer who has adopted trade-marks may 
require his name and residence and a description of his trade-marks to be recorded 
in books which shall be kept for that purpose in the Department of the Treasury, 
under such regulations as the Secretary of the Treasury shall prescribe, and may fur- 
nish to the Department facsimiles of such trade-marks; and thereupon the Secretary 
of the Treasury shall cause one or more copies of the same to be transmitted to each 
collector or other proper officer of the customs. ' ' 

This IS section 11 of the act of Congress approved July 24, 1897, entitled ''An act 
to provide revenue for the Government and to encourage the industries of the United 
States;" so amended as to extend the advantages therein given to domestic manu- 
facturers to manufacturers located in foreign countries who are by treaty stipulations 
entitled to these advantages. 

Sec. 27. That for the purposes of this act the United States shall 
be held to include and embrace all territory which is under the juris- 
diction and control of the United States; and the word "States," as 
used in this act, shall be held and construed to include and embrace 
the District of Columbia, the Territories of the United States, and 
such other territory as shall be under the jurisdiction and control of 
the United States. 

The purpose of this section is to enable persons located in Cuba, Porto Kico, the 
Philippines, and any other territory which is, for the time being, under the jurisdiction 
and control of the United States, to secure the advantages of this act for the protec- 
tion of their trade-marks; and to make it clear that "commerce among the several 
States ' ' is not to be limited to commerce among the States in a technical sense, but 
is to be construed to include commerce between the District of Columbia and a 
State, between a State and a Territory, between a State and Cuba, Porto Rico, or 
the Philippines, between a Territory and another Territory, between a Territory 
and Cuba, Porto Rico, or the Philippines, and between Cuba and Porto Rico, Cuba 
and the Philippines, or Porto Rico and the Philippines; in other words, between 
any portion of the territory of the United States having its distinctive government, 
whether State, Territorial, or other form of government, and any other portion. 

Sec. 28. This act shall take effect upon its passage. All acts and 
parts of acts inconsistent with this act are hereby repealed except so 
far as the same may apply to certificates of registration issued or 
applied for under the act of Congress approved March 3, 1881, 
entitled ' ' An act to authorize the registration of trade-marks and pro- 
tect the same," or under the act approved August 5, 1882, entitled 
'■'An act relating to the registration of trade-marks." 

As this proposed act makes comparatively little change in the procedure with 
respect to registration of trade-marks, and does not deprive owners of trade-marks 
of any substantial right which is given them by the present law, but on the other 
hand adds materially to such rights, there seems to be no substantial reason why it 
should not take effect at the earliest possible moment after its passage. 



APPENDIX TO REPORT. 



Chapter T. 



ACT PROVIDING FOR THE APPOINTMENT AND DUTIES OF THE 

COMMISSIONERS. 



AN ACT Appointing commissioners to revise the statutes relating to patents, trade 
and other marks, and trade and commercial names. 

Be it enacted h/ the Senate amd House of Representatwes of the United 
States of America m Congress assembled^ That the President, with the 
advice and consent of the Senate, shall appoint three commissioners, 
to serve without compensation, whose duty it shall be to revise and 
amend the laws of the United States concerning patents, trade and 
other marks, and trade or commercial names, which shall be in force 
at the time such commission shall make its final report, so far as the 
same relates to matters contained in or affected by the Convention for 
the Protection of Industrial Property concluded at Paris March twen- 
tieth, eighteen hundred and eighty-three, the agreements under said 
Convention concluded at Madrid April fourteenth, eighteen hundred 
and ninety-one, and the protocols adopted by the conference held 
under such Convention at Brussels, eighteen hundred and ninety-seven, 
and the treaties of the United States, and the laws of other nations 
relating to patents, trade and other marks, and trade or commercial 
names. 

That they shall report to Congress as soon as possible. 

That the report shall be so made as to indicate any proposed change 
in the substance of existing law, and shall be accompanied by notes 
which shall briefly and clearly state the reasons for any proposed change. 
It shall also be accompanied by references to such treaties and foreign 
laws relating to patents, trade and other marks, and trade or commer- 
cial names, as, in the opinion of the commissioners, may affect citizens 
of the United States. 

That the sum of two hundred and fifty dollars, or so much thereof 
as may be necessary, be appropriated to pay the necessary expenses of 
the commissioners in making their report, which sum shall be imme- 
diately available. 

Approved, June 4, 1898. 

145 



Chapter II. 

CONVENTION AND AGREEMENTS ESPECIALLY MENTIONED IN THE 
ACT PROVIDING FOR THE APPOINTMENT OF COMMISSIONERS. 



Section 1. 



CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY, CONCLUDED AT 
PARIS, MARCH 20, 1883. FINAL PROTOCOL. PROCLAMATION BY PRESIDENT JUNE 
11, 1887. 

CONVENTION AND FINAL PROTOCOL BETWEEN THE UNITED STATES, 
BELGIUM, BRAZIL, THE DOMINICAN REPUBLIC, FRANCE, GREAT BRITAIN, 
GAUTEMALA, ITALY, THE NETHERLANDS, NORWAY, PORTUGAL, SALVA- 
DOR, SERVIA, SPAIN, SWEDEN, THE SWISS CONFEDERATION, AND 
TUNIS,^FOR THE PROTECTION OF INDUSTRIAL PROPERTY. 

rConcluded at Paris, March 20, 1883. Exchange of ratifications by Signatory Powers, June 6, 1884. 
Adhesion to the Convention advised by the Senate, March 2, 1887. Ratified by the President, March 
29, 1887. Accession of the United States to the Union announced by the Minister Resident and Con- 
sul-General of the United States at Berne to the Federal Council of Switzerland, May 30, 1887. Pro- 
claimed, Jvrne 11, 1887.] 

By the President of the United States op America. 

a proclamation. 

Whereas a Convention and Final Protocol, in the French language, 
for the Protection of Industrial Property were concluded on the 20th 
day of March 1883 at Paris, France, between the Kingdom of Belgium 
and the Empire of Brazil, the French Republic, the Republic of Guate- 
mala, the Kingdom of Italy, the Kingdom of the Netherlands, the 
Kingdom of Portugal, the Republic of Salvador, the Kingdom of Ser- 
via, the Kingdom of Spain, and the Swiss Confederation, the tenor of 
which Convention and Final Protocol is as follows: 

Convention for the Protection of Industrial Convention pour la Protection de la Pro- 
Property. priiti Industrielle. 

His Majesty the King of the Belgians; Sa Majesty le Eoi des Beiges, Sa Majesty 

His Majesty the Emperor of Brazil; His TEmpereur du Bresil, Sa Majeste le Roi 

Majesty the King of Spain; The Presi- d'Espagne, le President de la Republique 

dent of the French Eepublic; The Presi- Frangaise, le President de la Republique 

dent of the Republic of Guatemala; His de Guatemala, Sa Majesty le Roi d'ltalie, 

Majesty the King of Italy; His Majesty Sa Majeste le Roi des Pays-Bas, Sa Majesty 

the King of the Netherlands; His Maj- le Roi de Portugal et des Algarves, le 

esty the King of Portugal and the Algar- President de la Republique de Salvador, 

ves; the President of the Republic of Sal- Sa Majesty le Roi de Serbie et le Conseil 

vador; His Majesty the King of Servia; federal de la Confederation Suisse; 
the Federal Comicil of the Swiss Con- 
federation; 

Equally animated by the desire to ifegalement animus du d6sir d' assurer, 

assure, by common accord, a complete d'un common accord, une complete et 

^The following countries are now members of the Union: Belgium, Brazil, Den- 
mark with the Faroe Islands, Dominican Republic, France with Algeria and the 
French colonies. Great Britain with New Zealand and Queensland, Italy, Japan; 
Netherlands with the Dutch East Indies, Surinam, and Curasao; Norway, Portugal, 
Serbia, Spain, Sweden, Switzerland, Tunis, and the United States. 

The following countries not now members of the Union may be said to be at the 
present time seriously considering the question of becoming members, from the fact 
that they each sent one or more delegates to the conference of the Union held at 
Brussels in 1897, some of these delegates taking an active part in the deliberations 
of the conference: Austria-Hungary, Chile, Ecuador, Germany, Mexico, and Tm-key. 

146 



CONVENTION FOE PROTECTION OF INDUSTRIAL PROPERTY. 



147 



and efl&cacious protection to the industry 
and commerce of the subjects of their 
respective States, and to contribute to the 
safeguard of the rights of inventors, and 
to the loyalty of commercial transactions, 
have resolved to conclude a Convention 
to that effect, and have named as their 
Plenipotentiaries the following: 

His Majesty the King of the Belgians: 
Baron Beyens, Grand Officer of His Royal 
Order of Leopold, Grand Officer of the 
Legion of Honor, etc., His Envoy Extra- 
ordinary and Minister Plenipotentiary at 
Paris; 

His Majesty the Emperor of Brazil : M. 
Jules Constant, Count de Villeneuve, 
member of the Council of His Majesty, 
His Envoy Extraordinary and Minister 
Plenipotentiary near His Majesty the 
King of the Belgians, Commander of the 
Order of Christ, Officer of His Order of 
the Rose, Knight of the Legion of Honor, 
etc. 

His Majesty the King of Spain : His Ex- 
cellency the Duke de Fernan-Nunez, de 
Montellano, and Del Arco, Count de Cer- 
vellon. Marquis of Almonacir, Grandee 
of Spain of the 1st Class, Knight of the 
distinguished Order of the Golden Fleece, 
Grand Cross of the Order of Charles III., 
Knight of Calatrava, Grand Cross of the 
Legion of Honor, etc.. Senator of the 
Kingdom, His Ambassador Extraordi- 
nary and Plenipotentiary at Paris; 

The President of the French Republic : Mr. 
Paul Challemel-Lacour, Senator, Minis- 
ter of Foreign Affairs; Mr. H^risson, 
Deputy, Minister of Commerce ; Mr. 
Charles Jagerschmidt, Minister Plenipo- 
tentiary of 1st Class, Officer of the Na- 
tional Order of the Legion of Honor; 

The President of the Republic of Guate- 
mala: Mr. Crisanto Medina, Officer of 
the Legion of Honor, etc.. His Envoy Ex- 
traordinary and Minister Plenipotentiary 
at Paris ; 

His Majesty the King of Italy : Mr. Con- 
stantin Ressman, Commander of His 
Orders of St. Maurice and St. Lazarus, 
and of the Crown of Italy, Commander 
of the Legion of Honor, etc. , Counsellor 
of the Embassy of Italy at Paris ; 

His Majesty the King of the Netherlands: 
Baron de Zuylen de Nyevelt, Commander 
of His Order of the Lion of the Nether- 
lands, Grand Cross of His Grand Ducal 
Order of the Oaken Crown and of the 
Golden Lion of Nassau, Grand Officer of 
the Legion of Honor, etc. , His Envoy Ex- 
traordinary and Minister Plenipotentiary 
at Paris; 

His Majesty the King of Portugal and the 
Algarves : Mr. Jos6 da Silva Mendes Leal, 
Counsellor of State, Peer of the Kingdom, 
Minister and Honorary Secretary of State, 
Grand Cross of the Order of St. James, 
Knight of the Order of the Tower and of 
the Sword of Portugal, Grand Officer of 



efficace protection a 1' Industrie et au com- 
merce des nationaux de leurs Etats re- 
spectifs et de contribuer k la garantie des 
droits des inventeurs et de la loyaut^ des 
transactions commerciales, ont r^solu de 
conclure une Convention k cet effet et 
ont nomm6 pour leurs Pl^nipotentiaires, 
savoir: 

Sa MajestS le Roi des Beiges, M. le Baron 
Beyens, Grand Officier de Son Ordre 
Royal de Leopold, Grand-Officier de la 
Legion d'honneur, etc., son Envoys ex- 
traordinaire et Ministre pl^nipotentiaire 
a Paris; 

Sa MajestS VEmpereur du Bresil, M. 
Jules Constant, Comte de Villeneuve, 
Membre du Conseil de Sa Majesty, son 
Envoy6 extraordinaire et Ministre pleni- 
potentiaire pr^s Sa Majesty le Roi dea 
Beiges, Commandeur de 1' Ordre du Christ, 
Officier de son Ordre de la Rose, Cheva- 
lier de la Legion d'honneur, etc.; 

Sa MajestS le Roi d^Espagne, S. Exc. M. 
le Due de Fernan-Nuiiez, de Montellano 
et Del Arco, Comte de Cervellon, Marquis 
de Almonacir, Grand d'Espagne de V° 
classe. Chevalier de F Ordre Insigne de la 
Toison-d'Or, Grand-Croix de T Ordre de 
Charles III., Chevalier de Calatrava 
Grand-Croix de la Legion d'honneur, etc., 
Senateur du Royaume, son Ambassadeur 
extraordinaire et plenipotentiaire k Paris; 

Le PrSsident de la Repuhlique Frangaise, 
M. Paul Challemel-Lacour, Senateur, 
Ministre des Affaires ^trangeres; M. H6- 
risson. Depute, Ministre du Commerce; M. 
Charles Jagerschmidt, Ministre plenipo- 
tentiaire de 1^ classe, Officier de 1' Ordre 
National de la Legion d'honneur, etc.; 

Le PrSsident de la RSpublique de Guate- 
mala, M. Crisanto Medina, Officier de la 
Legion d'honneur, etc., son Envoye ex- 
traordinaire et Ministre plenipotentiaire 
k Paris ; 

Sa MajestS le Roi d'ltalie, M. Constantin 
Ressman, Commandeur de ses Ordres des 
Saints Maurice et Lazare et de la Cou- 
ronne d'ltalie, Commandeur de la Legion 
d'honneur, etc., Conseiller de I'Ambas- 
sade d'ltalie a Paris; 

Sa Majeste le Roi des Pays-Bas, M. le 
Baron de Zuylen de Nyevelt, Comman- 
deur de son Ordre du Lion N^erlandais, 
Grand-Croix de son Ordre Grand-Ducal 
de la Couronnedu Chene et du Lion-d'Or 
de Nassau, Grand Officier de la Legion 
d'honneur, etc., son Envoy^ extraordi- 
naire et Ministre plenipotentiaire k Paris; 

Sa MajestS le Roi de Portugal et des Al- 
gai^es, M. Jose da Silva Mendes Leal, Con- 
seiller d'Etat, Pair du Royaume, Ministre 
et Secretaire d'Etat honoraire, Grand- 
Croix de r Ordre de Saint- Jacques, Che- 
valier de r Ordre de la Tour et de I'Epee 
de Portugal, Grand Officier de la Legion 



148 EEVISION OF STATUTES EELATING TO PATENTS, ETC. 



the Legion of Honor, etc., His Envoy Ex- 
traordinary and Minister Plenipotentiary 
at Paris; Mr. Fernand de Azevedo, Offi- 
cer of the Legion of Honor, etc., First 
Secretary of the Legation of Portugal at 
Paris; 

Ihe President of the Republic of Salvador: 
Mr. Torres Caicedo, Corresponding Mem- 
ber of the Institute of France, Grand Offi- 
cer of the Legion of Honor, ^ etc.. His 
Envoy Extraordinary and Minister Pleni- 
potentiary at Paris; 

His Majesty ihe King of Servia: Mr. 
Sima M. Marino vitch. Charge d' Affaires 
ad interim of Servia, Knight of the Royal 
Order of Takovo, etc. ; 

And the Federal Council of the Sunss 
Confederation: Mr. Charles Edward Lardy, 
its Envoy Extraordinary and Minister 
Plenipotentiary at Paris; Mr. J. Weibel, 
Engineer at Geneva, President of the 
Swiss Section of the permanent Commis- 
sion for the protection of Industrial Prop- 
erty. 

Who, after having communicated to 
each other their respective full powers, 
found to be in good and due form, have 
agreed upon the following Articles: 

Article I. 



d'honneur, etc., son Envoye extraordi- 
naire et Ministre plenipotentiaire a Paris; 
M. Fernand de Azevedo, Officier de la 
Legion d'honneur, etc., Premier Secre- 
taire de la Legation de Portugal k Paris; 

Le President de la Republique de SalvadoTf 
M. Torres Caicedo, Membre correspon- 
dant de I'lnstitutde France, Grand Officier 
de la Legion d'honneur, etc., son Envoye 
extraordinaire et Ministre plenipotentiaire 
a Paris; 

Sa Majeste le Roi de Serbie, M. Sima S. 
]\Iarino vitch. Charge d' Affaires par inte- 
rim de Serbie, Chevalier de I'Ordre Royal 
de Takovo, etc., etc.; 

Et le Conseil Federal de la Confederation 
Suisse, M. Charles-Edouard Lardy, son 
Envoye extraordinaire et Ministre pleni- 
potentiaire a Paris; INI. J. Weibel, Inge- 
nieur a Geneve, President de la Section 
Suisse de la Commission permanente pour 
la protection de la propriete industrielle. 

Lesquels, apr^s s'etre communique 
leurs pleins pouvoirs respectifs, trouves 
en bonne et due forme, sont convenus des 
Articles suivants: 

Article I. 



The Governments of Belgium, of Brazil, 
of Spain, of France, of Guatemala, of 
Italy, of the Netherlands, of Portugal, of 
Salvador, of Servia and of Switzerland, 
have constituted themselves into a state 
of Union for the protection of Industrial 
Property.^ 

Article II. 



Les Gouvernements de la Belgique, da 
Br^sil, de I'Espagne, de la France, du 
Guatemala, de T Italic, des Pays-Bas, du 
Portugal, du Salvador, de la Serbie et de 
la Suisse sont constitues a I'etat d' Union 
pour la protection de la Propriety indus- 
trielle. 

Article II. 



The sabjects or citizens of each of the 
contracting States shall enjoy, in all the 
other States of the Union, so far as 
concerns patents for inventions, ^ trade 
or commercial marks, and the commer- 
cial name, the advantages that the respec- 
tive laws thereof at present accord, or 
shall afterwards accord to subjects or citi- 
zen?. In consequence they shall have 
the same protection as these latter, and 
the same legal recourse against all in- 
fringements of their rights, under reserve 
of complying with the formalities and 
conditions imposed upon subjects or citi- 
zens by the domestic legislation of each 
State.' 

Article III. 



Les sujets ou citoyens de chacun dea 
Etats contractants jouiront, dans tous les 
autres Etats de 1' Union, en ce qui con- 
cerne les brevets d' invention, les dessins 
ou modeles industriels, les marques de 
fabrique ou de commerce et le nom com- 
mercial, des a vantages que les lois respec- 
tives accordent actuellement ou accord- 
eront par la suite aux nationaux. En 
consequence, ils auront la memo protec- 
tion que ceux-ci et le meme recours l^gal 
centre toute atteinte portee a leurs droits, 
sous reserve de I'accomplissement des 
f ormalites et des conditions imposees aux 
nationaux par la legislation int^rieure de 
chaque Etat. 

Article III. 



Are assimilated to the subjects or citi- 
zens of the contractinf States, the sub- 
jects or citizens of States, not forming 
part of the Union, who are domiciled or 



Sont assimil^ aux sujets on citoyena 
des Etats contractants les sujets ou cito- 
yens des Etats ne faisant pas partie de 
r Union, qui sont domicili^s ou ont des 



^ See paragraph 1 of Final Protocol, p. 152. 
* See paragraph 2 of Final Protocol, p. 152. 



^ See paragraph 3 of Final Protocol, p. 153. 



CONVENTION FOR PROTECTION OF INDUSTRIAL PROPERTY. 149 



have industrial or commercial establish- 
ments upon the territory of one of the 
States of the Union. ^ 

Article IV. 

Any one who shall have regularly de- 
posited an application for a patent of in- 
vention, of an industrial model, or design, 
of a trade or commercial mark, in one of 
the contracting States, shall enjoy for the 
purpose of making the deposit in the other 
States, and under reserve of the rights of 
third parties, a right of priority during 
the periods hereinafter determined. 

In consequence, the deposit subse- 
quently made in one of the other States 
of the Union, before the expiration of 
these periods cannot be invalidated by 
acts performed in the interval, especially 
by another deposit, by the publication of 
the invention or its working by a third 
party, by the sale of copies of the design, 
or model, by the employment of the 
mark. 

The periods of priority above-men- 
tioned shall be six months for patents of 
invention and three months for designs 
or industrial models, as well as for trade 
or commercial marks. They shall be 
augmented by one month for countries 
beyond the seas.^ 

Article V. 

The introduction by the patentee into 
countries where the patent has been 
granted, of articles manufactured in any 
other of the States of the Union, shall not 
entail forfeiture. 

The patentee, however, shall be subject 
to the obhgation of working his patent 
conformably to the laws of the country 
into which he has introduced the pat- 
ented axticles. 

Article VI. 

Every trade or commercial mark regu- 
larly deposited in the country of origin 
shall be admitted to deposit and so pro- 
tected in all the other countries of the 
Union. ^ 

Shall be considered as country of origin, 
the country where the depositor has his 
principal establishment. 

If this principal establishment is not 
situated in one of the countries of the 
Union, shall be considered as country of 
origin that to which the depositor be- 
longs. 

The deposit may be refused, if the ob- 
ject, for which it is asked, is considered 
contrary to morals and to public order. 



4tablissements industriels ou commer- 
ciaux sur le territoire de I'un des Etats 
de r Union. 

Article IV. 

Celui qui aura reguliferement fait le d6- 
pot d'une demande de brevet d' invention, 
d'un dessin ou modele industriel, d'une 
marque de f abrique ou de commerce, dans 
I'un des Etats contractants, jouira, pour 
effectuer le d^pot dans les autres Etats, et 
sous reserve des droits des tiers, d'un droit 
de priorite pendant les delais determines 
ci-apres. 

En consequence, le d^pot ulterieure- 
ment opere dans I'un des autres Etats de 
1' Union, avant 1' expiration de ces delais, 
ne pourra etre invalide par des faits accom- 
plis dans 1' inter valle, soit, notamment, 
par un autre depot, par la publication de 
1' invention ou son exploitation par un 
tiers, par la mise en vente d'exemplaires 
du dessin ou du modele, par I'emploi de 
la marque. 

Les delais de priorite mentionnes ci- 
dessus seront de six mois pour les brevets 
d' invention, et de trois mois pour les des- 
sins ou modeles industriels, ainsi que 
pour les marques de fabrique ou de com- 
merce, lis seront augmentes d'un mois 
pour les pays d' outre mer. 

Article V. 

L' introduction par le brevets, dans le 
pays ou le brevet a ^te delivre, d'objets 
fabriqu^s dans I'un ou 1' autre- Jes Etats de 
de r Union, n'entrainera pas la dech6- 
ance. 

Toutefois le brevete restera soumis ^ 
r obligation d* exploiter son brevet con- 
formement aux lois du pays o^ il intro- 
duit les objets brevetes. 



Article VI. 

Toute marque de fabrique ou de com- 
merce r^gulierement deposee dans le pays 
d'origine sera admise au d^pot et pro- 
tegee telle quelle dans tons les autres pays 
de 1' Union. 

Sera consider^ comme pays d'origine 
le pays ou le deposant a son principal 
4tablissement. 

Si ce principal etablissementn' est point 
situe dans un des pays de 1' Union, sera 
consider^ comme d'origine celui auquel 
appartient le deposant. 

Le d^pdt pourra ^tre refuse, si I'objet 
pour lequel il est demande est considlr^ 
contraire a la morale ou k I'ordre public. 



^ See amendment First Protocol signed at Brussels December 14, 1897, p. 182. 
' See paragraph 4 of Final Protocol, p. 153. 



150 BE^ISION OF STATUTES RELATING TO PATENTS, ETC. 



Article VII. 

The nature of the production upon 
which the trade or commercial mark is 
to be affixed can not in any case be an 
obstacle to the deposit of the mark. 

Article VIII. 

The commercial name shall be pro- 
tected in all the countries of the Union 
without obligation of deposit, whether it 
forms part or not, of a trade or commercial 
mark. 

Article IX. 

Every production bearing, unlawfully, 
a trade or commercial mark, or a com- 
mercial name, may be seized upon im- 
portation into those of the States of the 
Union in which such mark or such com- 
mercial name has a right to legal pro- 
tection. 

The seizure shall take place either at 
the instance of the public prosecutor or 
of the interested party, comformably to 
the domestic legislation of each State. ^ 

Article X. 



Article VII. 

La nature du produit sur lequel la 
marque de fabrique ou de commerce doit 
^tre appos^e ne pent, dans aucun cas, faire 
obstacle au d4p6t de la marque. 

Article VIII. 

Le nom commercial sera prot^g^ dans 
tons les pays de 1' Union sans obligation 
de depot, qu'il fasse ou non partie d'une 
marque de fabrique ou de commerce. 

Article IX. 

Tout produit portant illicitement une 
marque de fabrique ou de commerce, ou 
un nom commercial, pourra 4tre saisi ^ 
r importation dans ceux des Etats de 
r Union dans lesquels cette marque ou ce 
nom commercial ont droit k la protection 



La saisie aura lieu a la requete soit du 
Ministere public, soit de la partie int^- 
ressee, conformement a la legislation in- 
t^ieure de chaque Etat. 

Article X. 



The provisions of the preceding article 
shall be applicable to every production 
bearing falsely as indication of origin, 
the name of a stated locality when this 
indication shall be joined to a fictitious 
commercial name or a name borrowed 
with fraudulent intention. 

Is reputed interested party every manu- 
facturer or trader engaged in the manu- 
facture or sale of this production, when 
established in the locality falsely indi- 
cated as the place of export.^ 

Article XL 

The High Contracting parties engage 
between themselves to accord a tempo- 
rary protection to patentable inventions, 
to industrial designs or models as well as 
to trade or commercial marks for the pro- 
ductions, which may figure at official or 
officially recognized International Ex- 
hibitions.* 

Article XII. 

Each one of the High Contracting 
parties engages to establish a special 
service of Industrial Property and a Cen- 
tral Dep6t, for giving information to the 
public, concerning patents of invention, 
industrial designs or models and trade or 
commercial marks. ^ 



Les dispositions de I'article precedent 
seront applicables ^ tout produit portant 
faussement, comme indication de prove- 
nance, le nom d'une locality d^terminee, 
lorsque cette indication sera jointe k un 
nom commercial fictif ou emprunt^ dans 
une intention frauduleuse. 

Est r4put4 partie int^ress^e tout fabri- 
cant ou commergant engage dans la fab- 
rication ou le commerce de ce produit, et 
^tabli dans la localite faussement indiqu^e 
comme provenance. 

Article XI. 

Les Hautes Parties contractantes s'en- 
gagent a accorder une protection tempo- 
raire aux inventions brevetables, aux des- 
sins ou modules industriels, ainsi qu'aux 
marques de fabrique ou de commerce pour 
les produits qui figureront aux Exposi- 
tions Internationales officielles ou offi- 
ciellement reconnues. 

Article XII. 

Chacune des Hautes Parties contrac- 
tantes s' engage k ^tablir un service special 
de la Propriety industrielle et un depot 
central pour la communication au public 
des brevets d' invention, des dessins ou 
modeles industriels et des marques de 
fabrique ou de commerce. 



^See amendment First Protocol, signed at Brussels December 14, 1897, p. 182. 
^See paragraph 5 of Final Protocol, p. 153. 



CONVENTION FOR PROTECTION OF INDUSTRIAL PROPERTY. 151 



Article XIII. 

An International Office shall be organ- 
ized under the title of " Iiitertiational 
Bureau of the Union for the Protection 
of Industrial Property." 

This Bureau, the cost of which shall be 
supported by the Governments of all the 
contracting States, shall be placed under 
the high authority of the Superior Ad- 
ministration of the Swiss Confederation, 
and shall work under its supervision. 
Its powers shall be determined by com- 
mon accord between the States of the 
Union. 

Article XIV. 

The present convention shall be sub- 
mitted to periodical revisions for the pur- 
pose of introducing improvements calcu- 
lated to perfect the system of the Union. 

With this object, Conferences shall take 
place successively in one of the contract- 
ing States between the delegates of said 
States. 

The next meeting shall take place in 
1885 at Rome.i 



Article XIII., 

Un office international sera organist 
sous le titre de Bureau International de 
V Union pour la protection de la Propriety 
industrielle. 

Ce Bureau, dont les frais seront sup- 
portes par less administrations de tons 
les Etats contractants, sera plac4 sous la 
haute autorit^ de F Administration supe- 
rieure de la Confederation Suisse, et 
fonctionnera sous sa surveillance. Les 
attributions en seront d^terminees d'un 
commun accord entre les Etats de 
r Union. 

Article XIV. 

La pr^sente Convention sera soumise a 
des revisions p^riodiques en vue d'y intro- 
duire les ameliorations de nature a per- 
fectionner le systeme de 1' Union. 

A cet effet, des Conferences auront lieu 
successivement, dans Tun des Etats, con- 
tractants, entre les delegues desdits Etats. 

La prochaine reunion aura lieu en 1885, 
k Rome. 



Article XV. 

' It is understood that the High Con- 
tracting parties respectively reserve the 
right to make, separately, between them- 
selves, special arrangements for the pro- 
tection of industrial property so far as 
these arrangements shall not interfere 
with the provisions of the present con- 
vention. ^ 

Article XVI. 

The States that have not taken part in 
the present convention shall be admitted 
to adhere to the same upon their applica- 
tion. 

This adhesion shall be notified through 
the diplomatic channel to the Govern- 
ment of the Swiss Confederation and by 
the latter to all the others. 

It shall convey, of full right, accession 
to all the clauses and admission to all the 
advantages stipulated by the present con- 
vention.'- 

Article XVII. 

The execution of the reciprocal engage- 
ments contained in the present convention 
is subordinated so far as needful, to the 
accomplishment of the formalities and 
rules established by the Constitutional 
laws of such of the High Contracting 
parties as are bound to ask the applica- 
tion thereof, which they agree to do within 
the shortest delay possible. 



Article XV. 

II est entendu que les Hautes Parties 
contractantes se reservent respectivement 
ledroit de prendre s^parement, entre elles, 
des arrangements particuliers pour la pro- 
tection de la Propriety industrielle, en tant 
que ces arrangements ne contreviendra- 
ient point aux dispositions de la pr^sente 
Convention. 

Article XVI. 

Les !&tats qui n'ont point pris part a la 
presente Convention seront admis k y 
adherer sur leur demande. 

Cette adhesion sera notifiee par la voie 
diplomatique an Gouvernement de la Con- 
federation Suisse, et par celui-ci k tons les 
autres. 

Elle emportera, de plein droit, accession 
d toutes les clauses et admission d tons les 
avantages stipules par la presente Conven- 
tion. 

Article XVII. 

L' execution des engagements r^cipro- 
ques contenus dans la presente Conven- 
tion est subordonnee, en tant que de 
besoin, a I'accomplissement des formalites 
et regies Stabiles par les lois constitution- 
nelles de celles des Hautes Parties con- 
tractantes qui sonttenues d'en provoquer 
r application, cequ' elles s'obligent h faire 
dans le plus bref d61ai possible. 



^ See amendment First Protocol signed at Brussels December 14, 1897, p. 182. 

^ See agreement concerning the suppression of false indications of origin and agree- 
ment concerning the international registration of trademarks concluded at Madrid, 
AprU 15, 1891, p. 158. 

S. Doc. 20 11* 



152 KE VISION OF STATUTES EELATING TO PATENTS, ETC. 



Article XVIII. 

The present Convention shall be put into 
execution within a month after exchange 
of ratifications, and shall remain in force 
during a period of time not determined, 
until the expiration of one year from the 
day upon which the denunciation shall 
be made. 

This denunciation shall be addressed 
to the Government empowered to receive 
adhesions. It shall only produce its effect 
as regards the State making it, the con- 
vention remaining executory for the other 
contracting parties. 

Article XIX. 

The present Convention shall be rati- 
fied and the ratifications shall be ex- 
changed at Paris, within the period of 
one year at the latest. 

In witness whereof the respective Plen- 
ipotentiaries have signed it and affixed to 

Done at Paris the 20th of March, 1883. 

[seal.] Beyens, 

' ' Villeneuve. 

" Due de Fernan-NuSez. 

'* P. Challemel-Lacoue. 

** Ch. Herisson. 

** Ch. Jagerschmidt. 

" Crisanto Medina. 

** Ressman. 

* * Baron de Zuylen de Nyevelt. 

" Jose da Silva Mendes Leal. 

" F. D'Azevedo. 

*' J. M. Torres-Caicedo. 

'* Sim A M. Marinovitch. 

" Lardy. 

" J. Weibel. 



Article XVIII. 

La pr^sente Convention sera mise k 
execution dans le delai d'un mois a partir 
de l'6change des ratifications et demeu- 
rera en vigueur pendant un temps inde- 
termin^, jusqu'a 1' expiration d'une ann^e 
k partir du jour ou la d^nonciation en sera 
faite. 

Cette denonciation sera adressee an 
Gouvernement charge de recevoir les ad- 
hesions. File ne produira son effet qu'^ 
regard de I'Etat qui I'aura faite, la Con- 
vention restant ex^cutoire pour les autres 
Parties contractantes. 

Article XIX. 

La presente Convention sera ratifi^e, et 
les ratifications en seront echangees 4 
Paris, dans le d^lai d'un an au plus tard. 

En foi de quoi, les Plenipotentiaires 
respectifs Font sign^e et y ont appos6 leurs 

Fait a Paris, le 20 Mars 1883. 

[l. s.] Beyens. 

" Villeneuve. 

" Due DE Fernan-NuSez. 

" p. Challemel-Lacour. 

" Ch. Herisson. 

" Ch. Jagerschmidt. 

' ' Crisanto Medina. 

* ' Ressman. 

' ' Baron de Zuylen de Nyevelt^ 

*' Jose da Silva Mendes Leal. 

" F. D'Azevedo. 

" J. M. Torres-Caicedo. 

" SiMA M. Marinovitch. 

" Lardy. 

" J. Weibel. 



final protocol. 

On proceeding to the signature of the 
convention, concluded this day between 
the Governments of Belgium, Brazil, 
Spain, France, Guatemala, Italy, the 
Netherlands, Portugal, Salvador, feervia, 
and Switzerland, for the protection of in- 
dustrial property, the undersigned pleni- 
potentiaries have agreed on the following: 



1. The words Industrial Property are to 
be understood in their widest acceptation, 
in the sense that they apply not only to 
the productions of industry properly so 
called, but equally to the productions of 
agriculture (wines, grains, fruits, cattle, 
&c.) and to mineral productions used in 
commerce (mineral waters, &c.). 

2. Under the name Patents of Invention 
are included the various classes of indus- 
trial patents granted by the laws of the 
contracting states, such as patents of im- 
portation, patents of improvement, &c. 



peotocole de cl6ture. 

Au moment de proceder k la signature 
de la Convention conclue, ^ la date de ce 
jour, entre les Gouvernements de la Bel- 
gique, du Br^sil, de I'Espagne, de la 
France, du Guatemala, de T Italic, des 
Pays-Bas, du Portugal, du Salvador, de la 
Serbie et de la Suisse, pour la protection 
de la Propriety industrielle, les Plenipo- 
tentiaires soussignes sont convenus de ce 
qui suit: 

1. Lea mots PropriSti Industrielle doi- 
veiit etre entendus dans leur acception la 
plus large, en ce sens qu'ils s'appliquent 
non seulement aux produits de 1' Industrie 
proprement dite, mais egalement aux pro- 
duits de I'agriculture (vins, grains, fruits, 
bestiaux, etc.) et aux produits min^raux 
livres au commerce (eaux min^rales, etc.) 

2. Sous le nom de Brevets d'invention 
sont comprises les diverses especes de 
brevets industriels admises par les legis- 
lations des Etats contractants, telles que 
brevets d' importation, brevets de perfec- 
tionnement, etc. 



CONVENTION FOR PROTECTION OF INDUSTRIAL PROPERTY. 



153 



3. It is understood that the final pro- 
vision of Article 2 of the convention shall 
in no respect infringe upon the laws of 
each of the contracting states, so far as 
concerns the procedure before the courts 
and the competence of the said courts. 

4. Paragraph 1 of Article 6 is to be 
understood in the sense that no trade or 
commercial mark shall be excluded from 
protection, in one of the states of the 
Union, by the mere fact that it may not 
satisfy, in respect to the signs composing 
it, the conditions of the laws of this state, 
provided that it does satisfy, in this 
regard, the laws of the country of origin, 
and that it has been in this latter country, 
duly deposited. Saving this exception 
which concerns only the form of the 
mark, and under reservation of the pro- 
visions of the other articles of the conven- 
tion, the domestic legislation of each of 
the states shall receive its due application. 

In order to avoid all misinterpretation, 
it is understood that the use of public 
armorial bearings and decorations may be 
considered contrary to public order in the 
sense of the final paragraph of Article 6. 

5. The organization of a special service 
of Industrial Property mentioned in Ar- 
ticle 12 shall include, as far as is possible, 
the publication in each state of an oflicial 
periodical. 

6. The common expenses of the Inter- 
national Bureau, created by Article 13, 
shall in no case exceed yearly a sum-total 
representing a mean of 2,000 francs for 
each contracting state.* 

In order to determine the contributory 
share of each of the states in this sum- 
total of expenses, the contracting states, 
and those who may hereafter adhere to 
the Union, shall be divided into six 
classes, each contributing in the propor- 
tion of a certain number of units, namely: 

1st doss 25 units 

2d " 20 " 

Sd ' '• 15 " 

^tk ** 10 ♦' 

6th ** 5 " 

6th " 3 '* 

These coefficients shall be multiplied 
by the number of the states of each class, 
and the sum of the products thus obtained 
shall furnish the number of imits by which 
the total expense is to be divided. The 
quotient will give the amount of the unit 
of expense. 



3. II est entendu que la disposition 
finale de Particle 2 de la Convention ne 
porte aucune attemte £l la legislation de 
chacun des Etats contractants, en ce qui 
concerne la procedure suivie devant les 
tribunaux et la competence de ces tri- 
bunaux. 

4. Le paragraphe 1®"" de Particle 6 doit 
etre entendu en ce sens qu' aucune 
marque de fabrique ou de commerce ne 
pourra etre exclue de la protection dans 
I'un des Etats de 1' Union par le fait seul 
qu'elle ne satisferait pas, au point de vue 
des signes qui la composent,, aux condi- 
tions de la legislation de cet Etat, pourvu 
qu'elle satisfasse, sur ce point, a la legis- 
lation du pays d'origine et qu'elle ait Ite, 
dansce dernier pays, I'objet d'un d^pot 
regulier. Sauf cette exception, qui ne 
concerne que la forme de la marque, et 
sous reserve des dispositions des autres 
articles de la Convention, la legislation 
interieure de chacun des Etats recevra son 
application. 

. Pour eviter toute fausse interpretation, 
il est entendu que P usage des armoiries 
publiques et des decorations peut etre 
considere comme contraire a Pordre pub- 
lic, dans le sens du paragraphe final de 
Particle 6. 

5. L' organisation du service special de 
la Propriete industrielle mentionne a 
Particle 12 comprendra, autantque possi- 
ble, la publication, dans chaque Etat, 
d'une feuille officielle periodique. 

6. Les frais communs du Bureau inter- 
national institue par Particle 13 ne pour- 
ront, en aucun cas, depasser, par annee, 
une somme totale representant une moy- 
enne de 2,000 francs par chaque Etat con- 
tractant. 

Pour determiner la part contributive de 
chacun des Etats dans cette somme totale 
des frais, les Etats contractants et ceux 
qui adhereraient ulterieurement k P Union 
seront di vises en six classes, contribuant 
chacune dans la proportion d'un certain 
nombre d' unites, savoir: 

V^ classe 25 unites. 

2« '' 20 " 

3« *' 15 '* 

4^ *' 10 " 

5« " 5 " 

6« " 3 " 

Ces coefficients seront multiplies par le 
nombre des Etats de chaque classe, et 
la somme des produits ainsi obtenus four- 
nira le nombre d' unites par lequel la de- 
pense totale doit etre divisee. Le quo- 
tient donnera le montant de Punite de 
depense. 



* Amended. See Article 1 of Third Protocol, signed at Madrid, April 15, 1891, p. 156. 



164 EEVISION OF STATUTES EELATING TO PATENTS, ETC. 



The contracting states are classified as 
follows in respect to the division of the 
expenses: 

1st class. — France, Italy. 
2d *• .—Spain. 

Sd ** . — Belgium, Brazil, Portugal, 
Switzerland. 
^th " .—Netherlands. 
bth " .— Servia. 
6th " . — Guatemala, Salvador. 

The Swiss Government shall supervise 
the expenditure of the International Bu- 
reau, make the necessary advances, and 
state the annual account, which shall be 
communicated to all the other Govern- 
ments. 

The International Bureau shall collect 
information of every kind relating to the 
protection of Industrial Property, and 
shall compile from it general statistics, 
which shall be transmitted to all the Gov- 
ernments. It shall occupy itself with 
examinations of general utility which may 
be of interest to the Union, and shall pub- 
lish, with the assistance of the documents 
put at its disposal by the various Govern- 
ments, a periodical in the French lan- 
guage on questions which concern the ob- 
ject of the Union. 

The numbers of this periodical and all 
the documents published by the Interna- 
tional Bureau shall be partitioned among 
the Governments of the states of theUnion 
in the proportion of the number of con- 
tributary units above mentioned. 

The copies and supplementary docu- 
ments which may be requested either by 
the said Governments, or by corporations 
or private persons, shall be paid for sep- 
arately. 

The International Bureau must always 
hold itself at the disposal of the members 
of the Union, in order to furnish them, 
on questions relating to the international 
service of Industrial Property, with such 
special information as they may need. 

The Government of the country where 
the next Conference is to be held shall 
prepare, with the assistance of the Inter- 
national Bureau, the work of the said 
Conference. 

The director of the International Bureau 
shall be present at the sessions of the Con- 
ferences, and shall take part in the dis- 
cussions without voting. 

He shall make an annual report on its 
management, which shall be communi- 
cated to all the members of the Union. 

The official language of the Interna- 
tional Bureau shall be the French lan- 
guage. 

7. The present final protocol, which 
shall be ratified at the same time as the 
Convention concluded this day, shall be 
considered as forming an integral part of 
that Convention, and shall have the same 
force, value, and duration. 



Les Etats contractants sont classes ainsi 
qu'il suit, en vue de la repartition des 

frais: 

l'' classe — France, Italic. 

2* " — Espagne. 

3e << — Belgique, Bresil, Portugal, 
Suisse. 

4e " — Pays-Bas. 

50 <« — Serbie. 

6« " — Guatemala, Salvador. 

L' Administration Suisse surveillera les 
depenses du Bureau international, fera 
les avances n6cessaires et ^tablira le 
compte annuel, qui sera communique ^ 
toutes les autres Administrations. 

Le Bureau international centralisera 
les renseignements de toute nature rela- 
tifs d, la protection de la Propriete indus- 
trielle et les reunira en une statistique 
gen^rale qui sera distribute d toutes les 
Administrations. II proc6dera aux etudes 
d'utilite commune interessant 1' Union et 
redigera, k I'aide des documents qui 
seront mis a sa disposition par les diverses 
Administrations, une feuille periodique, 
en langue frangaise, sur les questions con- 
cernant I'objet de 1' Union. 

Les numeros de cette feuille, de m^me 
que tons les documents pubhes par le Bu- 
reau International, seront repartis entre 
les Adininistrations des Etats de 1' Union, 
dans la proportion du nombre des unites 
contributives ci-dessus mentionees. 

Les exemplaires et documents supple- 
mentaires qui seraient reclames, soit par 
lesdites Administrations, soit par des so- 
cietes ou des particuliers, seront pay^s a 
part. 

Le Bureau international devra se tenir 
en tout temps a la disposition des Membres 
de r Union, pour leur fournir, sur les ques- 
tions relatives au service international de 
la Propriete industrielle, les renseigne- 
ments sp^ciaux dont ils pom-raient avoir 
besoin. 

L' Administration du pays o^ doit singer 
la prochaine Conference pr^parera, avec 
le concours du Bureau international, les 
travaux de cette Conference. 

Le directeur du Bureau international 
assistera aux seances des Conferences et 
prendra part aux discussions sans voix 
deliberative. II fera, sur sa gestion, un 
rapport annuel qui sera communique a 
tons les membres de 1' Union. 

La langue officielle du Bureau interna- 
tional sera la langue frangaise. 

7. Le present Protocole de Cloture, qui 
sera ratifie en meme temps que la Con- 
vention conclue a la date de ce jour, sera 
considere comme faisant partie integrante 
de cette Convention, et aura m^mes force, 
valeur et duree. 



CONVENTION FOE PKOTECTION OF INDUSTRIAL PROPERTY. 155 

In faith whereof the undersigned pleni- En foi de quoi, les Pl^nipotentiaires 

potentiaries have drawn up the present soussign^s ont dress6 le present Proto 

protocol. cole. 

Signed: Beyens. Signe: Beyens. 



** VlLLENEUVE. 

** Due DE Feenan-NhSez. 

" p. Challemel-Lacouk. 

" Ch. Herisson. 

" Ch. Jageeschmidt. 

*• Crisanto Medina. 

" Ressman. 

" Baron de Zuylen de Nyevelt. 

" Jose da Silva Mendes Leal. 

** F. d'AzEVEDO. 

" J. M. Torres-Caicedo. 

" SiMA M. Marino viTCH. 

" J. Lardy. 

** J. Weibel. 



YlLLENEUVE. 

Due DE FERNAN-NlrfJEZ. 

P. Challemel-Lacoub. 

Ch. Herisson. 

Ch. Jagerschmidt. 

Crisanto Medina. 

Ressman. 

Baron de Zuylen de Nyevelt. 

Jose da Silva Mendes Leal. 

F. d'AzEVEDO. 

J. M. Torres Caicedo. 
SiMA M. Maeinovitch. 
Lardy. 
J. Weibel. 



And whereas the several Contracting parties to the said Convention 
and Final Protocol exchanged the ratifications thereof, at the City of 
Paris, on the 6th day of June, 1884 ; 

And whereas the several States hereinafter named, have adhered to 
the said Convention and Final Protocol in virtue of Article XVI of 
the said Convention : 

Great Britain March 17, 1884. 

Tunis March 20, 1884. 

The Dommican Republic October 20, 1884. 

Norway July 1st, 1885. 

Sweden July 3, 1885. 

And whereas in virtue of Article III of the Regulation for the Exe- 
cution of the said Convention, the several States hereinafter named 
have declared that their accession to the International Union for the 
protection of Industrial Property includes that of their Colonies and 
Possessions hereinafter enumerated, namely: 

France: Martinique, Guadeloupe and dependencies. Reunion and 
dependency, (Saint Mary of Madagascar) Cochin-China, St. Pierre, 
Miquelon, Guiana, Senegal and dependencies (Rivieres du Sud, Grand 
Bassam, Assimie, Porto Novo and Kotonou), the Congo and of the 
Gaboon, Mayotte, Nossi-B^, the French Establishments in India 
(Pondicherry, Chandernagore, Karikal, Mahe, Yanaon), New Cale- 
donia, the French Establishments in Oceanica (Tahiti and dependen- 
cies), Obock and Diego-Suarez; 

Portugal: The Azores and Madeira; 

Spain: Cuba, Porto Rico and the Philippines. ^^ 

And whereas the Republic of Salvador has in virtue of Article XV III 
of the said Convention, denounced the same on the ITth day of August 
1886, and will cease to be a member of the International Union for 
the Protection of Industrial Property on and after the ITth day of 
August 1887; 

And whereas the Swiss Confederation in virtue of the said Article 
XVI of the said Convention has invited the United States of America 
to adhere to the said Convention and final protocol; 

And whereas the President of the United States of America, by and 
with the advice and consent of the Senate thereof, did on the 29th day 
of March 1887, declare that the United States adhere to the said Con- 
vention and Final Protocol of the 20th of March, 1883; 

And whereas the Minister Resident and Consul General of the United 
States at Berne did, in virtue of Article 11 of the Regulation for the 



156 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Execution of the Convention of March 20, 1883, by note of May 30, 1887, 
to the Swiss Federal Council, designate the said thirtieth day of May 
1887, as the date of accession of the United States of America to the 
Union for the Protection of Industrial Property; 

Now, therefore, be it known that I, Grover Cleveland, President of 
the United States of America, have caused the said Convention and 
Final Protocol of March 20, 1883, to be made public, to the end that 
the same and every article and clause thereof may be observed and 
fulfilled with good faith by the United States and the citizens thereof. 
In witness whereof, I have hereunto set my hand and caused the seal 
of the United States to be affixed. 

Done at the city of Washington, this 11th day of June in the year 
of our Lord one thousand eight hundred and eighty-seven, 
[seal.] and of the Independence of the United States of America 
the one hundred and eleventh. 

Gkover Cleveland. 
By the President: 
T. F. Bayard, 

Secretary of State, 



Section 2. 

SUPPLEMENTAL CONVENTION CONCLUDED AT MADRID APRIL 15, 1891, AMEND- 
ING CONVENTION OF PARIS, CONCLUDED MARCH 20, 1883— PROCLAMATION BY 
PRESIDENT JUNE 22, 1892. 

SUPPLEMENTAL CONVENTION BETWEEN THE UNITED STATES, BELGIUM, 
BRAZIL, FRANCE, GREAT BRITAIN, GUATEMALA, ITALY, THE NETHER- 
LANDS, NORWAY, PORTUGAL, SPAIN, SWEDEN, SWITZERLAND, AND 
TUNIS, AMENDATORY OF THE CONVENTION OF MARCH 20, 1883, FOR 
THE PROTECTION OF INDUSTRIAL PROPERTY. 

[Concluded at Madrid April 15, 1891. Ratification advised by the Senate March 2, 1892. Ratified by 
the President March 30, 1892, Ratifications exchanged June 15, 1892. Proclaimed June 22, 1892.] 

By the President op the United States of America. 

a proclamation. 

Whereas protocol 3, amendatory of the Convention of March 20, 
1883, for the Protection of Industrial Property was signed at Madrid 
on the 15th day of April, 1891, by the plenipotentiaries of the United 
States and other powers, a certified copy of which protocol 3, in the 
French language, is word for word as follows: 

Ihird protocol. Troisieme protocole. 

Protocol concerning the dotation of the Protocole concernant la dotatoin du 

International Bureau of the Union for Bureau International de F Union pour la 

the Protection of Industrial Property be- Protection de la Propriete Industrielle 

tween Belgium, Brazil, Spain, the United conclu entre la Belgique, le Brezil, I'Es- 

States of America, France, Great Britain, pagne, les Etats-Unis d'Am^rique, la 

Guatemala, Italy, Norway, the Nether- France, la Grande Bretagne, le Guat^ 

lands, Portugal, Sweden, Switzerland, mala, T Italic, la Norvege, les Pays-Bas, 

and Tunis. le Portugal, la Suede la Suisse, et la 

Tunisie. 

The undersigned plenipotentiaries of Les soussign^s^ Plenipotentiaries des 

the Governments above named, Gouvernements ci-dessus ^num^res, 

In view of the declaration adopted Vu la Declaration adoptee le 12 mars 

March 12, 1883, by the International Con- 1883 par la Conference Internationale 



CONVENTION FOR PEOTECTION OF INDUSTRIAL PROPERTY. 



157 



ference for the Protection of Industrial 
Property convened at Paris, 

Have, with one accord and subject to 
ratification, concluded the following 
protocol: 

Article 1. 

The first paragraph of No. 6 of the final 
protocol annexed to the International 
Convention of March 20, 1883, for the pro- 
tection of industrial property is annulled 
and replaced by the following provision: 

''The expenses of the International 
Bureau instituted by Article 13 shall be 
supported by the contracting states in 
common. They can not in any event 
exceed the sum of sixty thousand francs 
per annum. 



pour la protection de la propriete indus- 
trielle rlunie a Paris, 

Ont, d'un commun accord, et sous re- 
serve de ratification, arrete le Protocole 
suivant: 

Article Premier. 

Le premier alin^a du chiffre 6 du Pro- 
tocole de cloture annex^ a la Convention 
Internationale du 20 mars 1883, pour la 
protection de la propriete industrielle est 
abroge et remplace par la disposition 
suivante: 

'' Les depenses du Bureau international 
institu^ par 1' article 13 seront supportees 
en commun par les Etats contractants. 
Elles ne pourront, en aucun cas, depasser 
la somme de soixante mille francs par 
ann^e." 



Article 2. 

The present protocol shall be ratified, 
and the ratifications thereof shall be ex- 
changed at Madrid within a period of six 
months at the latest. 

It shall take effect one month after the 
exchange of ratifications, and shall have 
the same force and duration as the Con- 
vention of March 20, 1883, of which it 
shall be considered as forming an integral 
part. 

In testimony whereof the plenipoten- 
tiaries of the states above named have 
signed the present protocol at Madrid, 
the fifteenth day of April, one thousand 
eight hundred and ninety -one. 

For Belgium: Th. de Bounder de Mels- 
broeck. 

For Brazil: Luis F. d'Abreu. 

For Spain: S. Moret, Marquis de Agui- 
lar, Enrique Calleja, Luis Mariano de 
Larra. 

For the United States of America: E. 
Burd Grubb. 

For France and Tunis: P. Cambon. 

For Great Britain: Francis Clare Ford. 

For Guatemala: J. Carrera. 

For Italy: Maffei. 

For Norway: Arild Huitfeldt. 

For the Netherlands: Gericke. 

For Portugal: Count de Casal Ribeiro. 

For Sweden: Arild Huitfeldt. 

For Switzerland: Ch. E. Lardet Morel. 



Article 2. 

Le present protocole sera ratifi^, et les 
ratifications en seront ^changees a Madrid 
dans le delai de six mois au plus tard. 

II entrera en vigueur un mois a partir 
de I'echange des ratifications, et aura la 
meme force et duree que la Convention de 
20 mars 1883 dont il sera considere comme 
faisant partie integrante. 

En foi de quoi, les plenipotentiaires des 
Etats ci-dessus enumeres ont signe le pres- 
ent protocole k Madrid le quinze avril mil 
huit cent quatre-vingt-onze. 



Pour la Belgique: Th. de Bounder de 
Melsbroeck. 

Pour le Brazil: Luis F. d'Abreu. 

Pour I'Espagne: S. Moret, Marques de 
Aguilar, Enrique Calleja, Luis Mariano 
de Larra. 

Pour les Etats-Unis d'Am^rique: E. 
Burd Grubb. 

Pour la France et la Tunisie: P. Cam- 
bon. 

Pour la Grande -Bretagne: Francis 
Clare Ford. 

Pour le Guatemala: J. Carrera. 

Pour r Italic: Maffei. 

Pour la Norvege: Arild Huitfeldt. 

Pour les Pays-Bas: Gericke. 

Pour le Portugal: Comte de Casal 
Ribeiro. 

Pour la Suede: Arild Huitfeldt. 

Pour la Suisse: Ch. E. Lardet Morel. 



And whereas the said protocol 3 has been duly ratified by the signa- 
tory powers, and the ratifications thereof were exchanged at the city 
of Madrid, on the 15th day of June, 1892; 

Now, therefore, be it known that I, Benjamin Harrison, President 
of the United States of America, have caused the said protocol 3 to be 
made public, to the end that the same and every article and clause 



158 EE VISION OF STATUTES EELATING TO PATENTS, ETC. 

thereof may be observed and fulfilled with good faith by the United 
States and the citizens thereof. 

In witness whereof I have hereunto set my hand and caused the seal 
of the United States to be affixed. 

Done at the city of Washington this 22d day of June, in the year of 
our Lord 1892 and of the Independence of the United States the one 
hundred and sixteenth. 

[seal.] Benj. Harrison. 

By the President: 

William F. Wharton, 

Acting Secretary of State, 

[Note. — Ratifications of protocol 4 were not exchanged. The protocol was referred 
to the next conference to be held at Brussels. See telegram from United States 
Charge at Madrid, June 15, 1892.] 



Section 3. 



AGREEMENT CONCERNING THE SUPPRESSION OF FALSE INDICATIONS OF ORIGIN 
ON MERCHANDISE, CONCLUDED AT MADRID APRIL 14, 1891. 

[Concluded at Madrid, April 14, 1891, between France, Great Britain, Spain, S\ntzerland, and Timls.i] 

Arrangement concemant la Repression des Agreement concerning the suppression of 
Fausses Indications de Provenance sur les false indications of ongin on Merchandise. 
Marchandises. 



Les Soussign^s, Plenipotentiaries des 
Gouvernements des fitats ci-dessus ^nu- 
mer6s, 

Vu r article 15 de la Convention Inter- 
nationale du 20 mars 1883 pour la protec- 
tion de la Propriety industrielle, 

Ont, d'un commun accord, et sous re- 
serve de ratification, arrets 1' Arrange- 
ment suivant: 

Akticle Premiee. 

Tout produit portant une fausse indica- 
tion de provenance dans laquelle un des 
ifitats contractants, ou un lieu situ6 dans 
I'un d'entre eux, serait, directement ou 
indirectement, indiqu6 comme pays ou 
comme lieu d'origine, sera saisi a 1' impor- 
tation dans chacun desdits l^tats. 

La saisie pourra s'effectuer dans I'Etat 
ou la fausse indication de provenance 
aura ete apposee, ou dans celui oti aura 
ete introduit^ le produit muni de cette 
fausse indication. 

Si la legislation d'un ifctat n'admet pas 
la saisie a 1' importation, cette saisie sera 
remplac^e par la prohibition d' importa- 
tion. 

Si la legislation d'un ]&tat n'admet pas 
la saisie a I'interieur, cette saisie sera rem- 
placee par les actions et moyens que la 
loi de cet £tat assure en pareil cas aux 
nationaux. 



The undersigned Plenipotentiaries of 
the States above enumerated. 

In view of article 15 of the Interna- 
tional Convention of March 20th, 1883, 
for the protection of industrial property. 

Have with one accord and subject to 
ratification, concluded the following 
agreement: 

Article 1. 

All product, bearing a false indication 
of origin, in which one of the contracting 
States, or a place situated in one of them, 
shall be directly or indirectly indicated 
as country or as place of origin, shall be 
seized on importation into any of said 
States. 

The seizure may also be effected in the 
State where the false indication of origin 
shall have been affixed, or in that where 
the product bearing such false indication 
shall have been introduced. 

If the law of a State does not permit 
seizure on importation, such seizure shall 
be replaced by prohibition of importa- 
tion. 

If the law of a State does not permit 
seizure in the interior, such seizure shall 
be replaced by the remedies assured in 
like case to natives by the law of such 
State. 



1 Portugal adhered to this agreement October 31, 1893. Brazil adhered to this 
agreement October 3, 1896. The following countries are now parties to this agree- 
ment: Brazil, France, Great Britain, Portugal, Spain, Switzerland, and Tunis. 



AGREEMENT FALSE INDICATIONS OF ORIGIN. 



159 



Article 2. 

La saisie aura lieu ^ la requite soit du 
Ministere public, soit d'une partie int^- 
ressee, individu ou society, conformement 
a la legislation int^rieure de chaque Etat. 

Les autorites ne seront pas tenues 
d'effectuer la saisie en cas de transit. 



Article 3. 

Les presentes dispositions ne font pas 
obstacle a ce que le vendeur indique son 
nom ou son adresse sur les produits pro- 
venant d'un pays different de celui de la 
vente; mais, dans ce cas, T adresse ou le 
nom doit ^tre accompagne de 1' indication 
precise et en caracteres apparents du pays 
ou du lieu de fabrication ou de produc- 
tion. 

Article 4. 

Les tribunaux de chaque pays auront 
k decider quelles sont les appellations 
qui, k raison de leur caract^re gen^rique, 
echappent aux dispositions du present 
Arrangement, les appellations r^gionales 
de provenance des produits vinicoles 
n'etant cependant pas comprises dans la 
reserve statute par cet article. 

Article 5. 

Les Etats de T Union pour la protection 
de la Propri^t^ industrielle qui n'ont pas 
pris part au present Arrangement seront 
admis k y adherer sur leur demande, et 
dans la forme prescrite par Particle 16 de 
la Convention du 20 mars 1883 pour la 
protection de la Propriete industrielle. 



Article 6. 

Le present AiTangement sera ratifi^, et 
les ratifications en seront ^changees a 
Madrid dans le d^lai de six mois au plus 
tard. 

II entrera en vigeur un mois a partir de 
I'echange des ratifications, et aura la 
meme force et duree que la Convention 
du 20 mars 1883. 

, En foi de quoi, les Pl^nipotentiaires des 
Etats ci-dessus ^numer^s ont sign4 le 
present Arrangement k Madrid, le quat- 
orze avril mil huit cent quatrevingt-onze. 



Article 2. 

The seizure shall take place at the re- 
quest either of the public prosecutor or 
of an interested party, individual, or so- 
ciety, in conformity with the domestic 
law of each State. 

The authorities shall not be bound to 
effect the seizure in case of transit. 

Article 3. 

The present provisions do not prevent 
the vendor from indicating his name or 
his address upon goods coming from a 
country other than that of sale; but in 
such case the address or the name must 
be accompanied by clear indication and 
in legible characters of the country or 
place of manufacture or of production. 



Article 4. 

The tribunals of each country shall de- 
cide what are the appellations which, by 
reason of their generic character, do not 
fall within the provisions of the present 
agreement, regional appellations of origin 
of products of the vine being, however, 
not comprised in the reserve provided for 
by this article. 

Article 5. 

The States of the Union for the protec- 
tion of industrial property, which have 
not taken part in the present agreement, 
shall be admitted to adhere to the same 
on their demand, and the form prescribed 
by article 16 of the Convention of March 
20th, 1883, for the protection of industrial 
property. 

Article 6. 

The present agreement shall be ratified, 
and the ratification shall be exchanged at 
Madrid within a period of six months at 
the latest. 

It shall take effect one month after the 
exchange of ratifications, and shall have 
the same force and duration as the con- 
vention of March 20th, 1883. 

In witness whereof the Plenipotentia- 
ries of the States above named have signed 
the present agreement at Madrid April 



160 EEVISION OF STATUTES RELATING TO PATENTS, ETC. 

Section 4. 

agreement concerning the international registration of trade- 
marks, concitjded at madrid april 14, 1891. 

[Concluded at Madrid April 14, 1891, between Belgium, France, Spain, Switzerland, and Tunls.^] 

Arrangement concernant V Enregistrement 
International des Marques de Fahrique ou Agreement concerning the International Reg- 
de Commerce. istration of Trade-Marks. 



Les Soussignes, P14nipotentairies des 
Gouvernements des Etats ci-dessus enu- 
mer^s, 

Vu r article 15 de la Convention Inter- 
nationale du 20 mars 1883, pour la pro- 
tection de la Propriety industrielle, 

Ont, d'un commun accord, et sous 
reserve de ratification, arrets P Arrange- 
ment suivant: 



The undersigned plenipotentiaries of 
the States above enumerated, 

In view of article 15 of the inter- 
national convention of March 20, 1883, 
for the protection of industrial property. 

Have, with one accord and subject to 
ratification, concluded the following 
agreement: 



Article Premier. 



Article 1. 



Lea sujets ou citoyens de chacun des 
6tats contractant pourronts' assurer, dans 
tous les autres Etats, la protection de 
leurs marques de fabrique ou de com- 
merce accept^es au d^pot dans le pays 
d'origine, moyennant le depot desdites 
marques au Bureau international a Berne, 
fait par I'entremise de T Administration 
dudit pays d'origine. 

Article 2. 

Sont assimiles aux sujets ou citoyens 
des Etats cpntractants les sujets ou cito- 
yens des Etats n'ayant pas adhere au 
present Arrangement qui satisfont aux 
conditions de 1' article 3 de la Convention. 



Article 3. 

Le Bureau international enregistrera 
imm^diatement les marques deposees 
conformement a Particle premier., II 
notifiera cet enregistrement aux Etats 
contractants. Les marques enregistrees 
seront publi^es dans un supplement au 
journal du Bureau international, au 
moyen soit d'un dessin, soit d'une de- 
scription pr^sent^e en langue fran9aise 
par le d6posant. 

En vue de la publicite a donner dans 
les divers Etats aux marques ainsi en- 
registrees, chaque Administration recevra 
gratuitement du Bureau international le 
nombre d'exemplaires de la susdite pu- 
blication qu'il lui plaira de demander. 

Aeticle 4. 

A partir de P enregistrement ainsi fait 
au Bureau international, la protection 
dans chacun des Etats contractants sera 
la meme que si la marque y avait ete 
directement depos^e. 



The subjects or citizens of each of the 
contracting States may secure, in all of 
the other States, the protection of their 
trade-marks accepted at the depository in 
the country of origin by means of the 
deposit of the said marks at the Inter- 
national Bureau at Berne, made by the 
intervention of the Government of the 
said country of origin. 

Article 2. 

Are assimilated to the subjects or citi- 
zens of the contracting States, the sub- 
jects or citizens of States which have not 
adhered to the present agreement, who 
fulfill the conditions of article 3 of the 
Convention. 

Article 3. 

The International Bureau shall imme- 
diately register the marks deposited in 
accordance with article first. It shall 
give notice of this registration to the 
contracting States. The registered marks 
shall be published in a supplement to the 
journal of the International Bureau, either 
by means of a cut or of a description pre- 
sented in the French language by the 
depositor. 

In view of the publicity to be given to 
the marks so registered in the different 
States, each Government shall receive 
gratuitously from the International Bu- 
reau such number of copies of said pub- 
lication as it shall see fit to demand. 

Article 4. 

From the time of registration so made 
at the International Bureau, the protec- 
tion in each of the contracting States 
shall be the same as if the mark had been 
directly deposited therein. 



^The following countries have since adhered to this agreement: Netherlands, 
March 1, 1893; Portugal, October 31, 1893; Italy, October 15, 1894; Brazil, October 
30, 1896. The following countries are now parties to this agreement: Belgium, Brazil, 
France, Italy, Netherlands, Portugal, Spain, Switzerland, and Tunis. 



AGEEEMENT INTERNATIONAL REGISTRATION OF TRADEMARKS. 161 



Article 5. 

Dans les pays ou leur legislation les y 
autorise, les Administrations auxquelles 
le Bureau international notifiera I'enre- 
gistrement d'une marque auront la faculte 
de declarer que la protection ne pent ^tre 
accordee k cette marque sur leur terri- 
toire. 

Elles devront exercer cette faculty dans 
I'annee de la notification prevue par Par- 
ticle 3. 

La dite declaration ainsi notifi^e au Bu- 
reau international sera par lui transmise 
sans delai a T Administration du pays 
d'origine et au proprietaire de la marque. 
L'interesse aura les memes moyens de 
recours que si la marque avait ete par lui 
directement deposee dans le pays ou la 
protection est refus^e. 



Article 6. 



Article 5. 

In the countries where their laws so 
authorize, the Governments to which the 
International Bureau shall give notice of 
the registration of a mark shall have 
power to declare that protection can not 
be given to such mark within their terri- 
tory. 

They shall exercise this right within a 
year from the notice provided for by 
article 3. 

The said declaration thus made known 
to the International Bureau shall be 
transmitted by it without delay to the 
Government of the country of origin and 
to the owner of the mark. The interested 
party shall have the same means of re- 
dress as if the mark had been deposited 
by him directly in the country where the 
protection is refused. 

Article 6. 



La protection resultant de I'enregistre- 
ment au Bureau international durera 20 
ans k partir de cet enregistrement, mais 
ne pourra etre invoqu^e en faveur d'une 
marque qui ne jouirait plus de la protec- 
tion legale dans le pays d'origine. 

Article 7. 

L' enregistrement pourra tou jours ^tre 
renouvele suivant les prescriptions des 
articles 1 et 3. 

Six mois avant 1' expiration du terme 
de protection, le Bureau international 
donneraun avis officieux k 1' Administra- 
tion du pays d'origine et au proprietaire 
de la marque. 

Article 8. 

L' Administration du pays d'origine 
fixera £l son gr6 et percevra k son profit 
une taxe qu'elle r^clamera du proprietaire 
de la marque dont 1' enregistrement inter- 
national est demand^. 

A cette taxe s'ajoutera un Emolument 
international de cent francs, dont le pro- 
duit annuel sera reparti par parts ^gales 
entre les Etats contractants par les soins 
du Bureau international, aprds deduction 
des frais communs necessit^s par 1' execu- 
tion de cet Arrangement. 



Article 9. 

L' Administration du pays d'origine 
notifiera au Bureau international les an- 
nulations, radiations, renonciations, trans- 
missions et autres changements qui se 
produiront dans la propriete de la marque. 



The protection resulting from the regis- 
tration at the International Bureau shall 
continue for twenty years from the date 
of registration, but can not be invoked in 
favor of a mark which has ceased to enjoy 
legal protection in the country of origin 

Article 7. 

The registration can always be renewed 
in accordance with the provisions of arti- 
cles 1 and 3. 

Six months prior to the expiration of 
the term of protection, the International 
Bureau shall give an official notice to the 
Government of the country of origin and 
to the owner of the mark. 

Article 8. 

The Government of the country of 
origin shall fix, in its discretion, and re- 
ceive for its own profit a fee, which it 
shall collect from the owner of the mark 
for which international registration is 
demanded. 

To such fee shall be added an inter- 
national fee of 100 francs, the annual 
proceeds of which shall, under the super- 
vision of the International Bureau, be 
distributed equally between the con- 
tracting States, after deduction of the 
common expenses necessary to the execu- 
tion of this agreement. 

Article 9. 

The Government of the country of 
origin shall notify the International 
Bureau of annulments, cancellations, 
abandonments, transfers, and other 
changes which occur in the right of 
ownership of the mark. 



162 REVISION- OF STATUTES RELATING TO PATENTS, ETC. 



I^e Bureau international enregistrera 
ces changements, les notifiera aux Admi- 
nistrations contractantes et les publiera 
aussitot dans son journal. 

Article 10. 

Les Administrations r^gleront d'un 
commun accord les details relatifs a 1' ex- 
ecution du present Arrangement. 

Article 11. 

Les l&tats de I'TTnion pour la protection 
de la Propri^te industrielle qui n'ont pas 
pris part au present Arrangement, seront 
admis k y adherer sur leur demande, et 
dans la forme prescrite par I'article 16 de 
la Convention du 20 mars 1883 pour la pro- 
tection de la Propriete industrielle. 

Des que le Bureau international sera 
inform^ qu'un Etat a adhere au present 
Arrangement, il adressera k I'Adminis- 
tration de cet Etat, conform^ment a I'ar- 
ticle 3, une notification collective dee 
marques qui, a ce moment, jouissent de 
la protection Internationale. 

Cette notification assurera, par elle 
meme, auxdites marques le benefice des 
precedentes dispositions sur le territoire 
de I'i^tat adherent, et fera courir le d^lai 
d'un an pendant lequel 1' Administration 
interess^e pent faire la declaration pr6vue 
par I'article 5. 

Article 12. 

Le present Arrangement sera ratifi^, et 
les ratifications en serant echang^es k 
Madrid dans le d^lai de six mois au plus 
tard. 

II entrera en vigeur un mois a partir de 
r^change des ratifications, et aura la 
meme force et dur6e que la Convention 
du 20 mars, 1883. 

En foi de quoi, les Plenipotentiaires des 
ifetats ci-dessus 4numer6s out sign^ le pre- 
sent Arrangement k Madrid, le quatorze 
avril mil huit cent quatre-vingt-onze. 

PROTOCOLE DE CL6tURE. 

Au moment de proc^der k la signature 
de 1' Arrangement concernant I'enregistre- 
ment international des marques de fa- 
brique ou de commerce, conclu a la date 
de ce jour, les Plenipotentiaires desEtats 
qui ont adhere audit Arrangement sont 
convenus de ce qui suit: 

Des doutes s'etant eieves au sujet de la 
portee de I'article 6, il est bien entendu 
que la faculte de refus que cet article laisse 
aux Administrations ne porte aucune at- 
teinte aux dispositions de Particle 6 de la 
Convention du 20 mars 1883 et du para- 
graphe 4 du Pi:otocole de cl6ture qui I'ac- 



The International Bureau shall register 
these changes, shall notify the contract- 
ing Governments thereof, and shall im- 
mediately publish them in its journal. 

Article 10. 

The Governments shall regulate by 
common consent the details pertaining to 
the execution of the present agreement. 

Article 11. 

The States of the Union for the protec- 
tion of industrial property which have not 
taken part in the present agreement shall 
be admitted to adhere thereto on their ap- 
plication and in the form prescribed by 
article 16 of the Convention of March 20, 
1883, for the protection of the industrial 
property. 

As soon as the International Bureau 
shall be informed that a State has adhered 
to the present agreement it shall address 
to the Government of the State, conform- 
ably to article 3, a collective notification 
of marks which at that time enjoy inter- 
national protection. 

This notice shall, of itself, secure to the 
said marks the benefit of the foregoing 
provisions in the territory of the adher- 
ing State, and shall cause to run the de- 
lay of a year, during which the interested 
Government can make the declaration 
provided for in article 5. 

Article 12. 

The present agreement shall be ratified, 
and the ratifications shall be exchanged 
at Madrid within a period of six months 
at the latest. 

It shall take effect one month after the 
exchange of ratifications, and shall have 
the same force and duration as the con- 
vention of March 20, 1883. 

In witness whereof the Plenipotentia- 
ries of the States above named have signed 
the present agreement at Madrid, April 
14, 1891. 

final protocol. 

On proceeding to the signature of the 
agreement concerning the international 
registration of trade-marks, concluded 
this day, the Plenipotentiaries of the 
States which have adhered to said Agree- 
ment have agreed as follows: 

Doubts having arisen on the subject of 
the meaning of Article 5, it is clearly un- 
derstood that the right of refusal which 
thatarticle leaves to the Governments does 
not affect the provisions of Article 6 of 
the Convention of March 20, 1883, and of 
paragraph 4 of the Final Protocol which 



INTERN A.TIONAL REGISTRATION OF TRADEMARKS. 163 

compagne, ces dispositions ^tant applica- accompanies it, these provisions being ap- 
bles aux marques deposees au Bureau plicable to the marks deposited at the In- 
international, comme elles I'ont ete et le ternationai Bureau as they have been and 
seront encore a celles deposees directe- still will be to those deposited directly in 
ment dans tons les pays contractants. all the contracting countries. 

Le present Protocole aura la meme force The present Protocol shall have the 

et duree que I' Arrangement auquel il se same force and duration as the Agreement 

rapporte. of which it forms a part. 

En foi de quoi, les Plenipotentiaires In witness whereof the undersigned 

soussign^s ont signe le present Protocole Plenipotentiaries have signed the present 

a Madrid, le quatorze avril mil huit cent Protoool at Madrid, the fourteenth of 

quatre-vingt-onze, April, 1893. 



Section 5. 



RULES FOR CARRYING INTO EFFECT THE AGREEMENT CONCERNING THE INTER- 
NATIONAL REGISTRATION OF TRADEMARKS, CONCLUDED AT MADRID APRIL 
14, 1891. 

[Translated for this report by Mr. Greeley.] 

Article 1. 

Application for International registration of a trademark under 
the agreement of April 14, 1891, should be addressed by the owner of 
the mark to the Government of the country of origin in the form 
prescribed by the latter. 

Each Government should collect for the international registration a 
fee of 100 francs plus such additional fee as it shall fix at its pleasure 
and which shall belong to it. 

Article 2. 

After having certified that the mark is duly registered, the Govern- 
ment of the country of origin shall address to the International 
Bureau at Berne: 

A. An application for registration in duplicate bearing a printed 
representation of the mark, and a statement of — 

First. The name of the owner of the mark. 
Second. His address. 

Third. The products or merchandise to which the mark is applied. 
Fourth. The date of registration in the country of origin. 
Fifth. The serial number of the mark in the country of origin. 
The printed representation of the mark may be replaced by a 
description of the latter in the French language. 

B. An electrotype (clichd) of the mark, for printing the latter in 
the publication which shall be made of it by the International Bureau. 
This electrotype (clichd) ought to reproduce the mark exactly in such a 
manner as to bring out clearly all its details. It must not be less than 
15 millimeters nor more than 10 centimeters long or wide. The thick- 
ness of the electrotype must be exactly 24 millimeters, corresponding 
with the height of printing type. This electrotype will be retained 
at the bureau. 

If the printed reproduction of the mark, required under A, is 
replaced by a simple description, the deposit of the electrotype shall 
not be necessary. 

C. If color is one of the distinct features of the mark, 30 copies on 
paper of a reproduction of the mark in colors may be furnished with 
the application. 



164' REVISION OF STATUTES RELATING TO PATENTS, ETO. 

D. A postal money order for 100 francs, being the amount of the 
fee for international registration. 

The application for registration shall be prepared in accordance with 
the form annexed to these rules, or in accordance with such other form 
as the Governments of the contracting States shall hereafter adopt by 
common consent. 

The International Bureau will furnish the necessary forms gratui- 
tously to the Governments. 

Article 3. 

The International Bureau will proceed without delay to enter the 
mark on a register for the purpose. 

The register will contain the following statements: 

First. The date of registration in the International Bureau. 

Second. The date of notification to the contracting States. 

Third. The serial number of the mark. 

Fourth. The name of the owner of the mark. 

Fifth. His address. 

Sixth. The products of articles to which the mark is applied. 

Seventh. The country of origin of the mark. 

Eighth. The date of registration in the country of origin. 

Ninth. The serial number of the mark in the country of origin. 

Tenth. Statements respecting the cancellation of the mark or its 
transfer. (Article 9 of the Agreement.) 

Article 4. 

The entry having been made in the register, the International Bureau 
shall certify on the two copies of the application that the registration 
has been made, and shall place upon both its signature and stamp. 
One of these copies shall remain in the archives of the bureau; the 
other shall be returned to the Government of the country of origin. 

Besides this, the International Bureau shall notify the Governments 
of the registration by sending to each of them a printed reproduction, 
or, if wanting, a description of the mark in the French language. 

First. The date of the registration at the International Bureau. 

Second. The serial number of the mark. 

Third. The name and address of the applicant. 

Fourth. The products of articles to which the mark is applied. 

Fifth. The country of origin of the mark, together with its date of 
registration and its serial number in that country. 

In the case before mentioned in article 2, letter C, notification shall 
also be accompanied by one of its copies of the reproduction of the 
mark in color. 

Article 5. 

The International Bureau shall provide for the publication of the 
mark, which shall be made in a supplement to its journal, and shall 
consist in the reproduction of the mark, or of the description of it in 
the French language, together with the statements mentioned in article 
4, paragraph 2. 

At the beginning of each year, the International Bureau shall pub- 
lish a table where there shall be stated in alphabetical order, and by 



- .;;;>s-*':^:;r.-;-;-' 



INTEENATIONAL REGISTEATION OF TRADEMARKS. 165 

contracting States, the names of the owners of the marks which have 
been published during the preceding year. 

Each Government shall receive gratuitously from the International 
Bureau as many copies as it shall ask for of the supplement containing 
the publications relative to international registration. 

Article 6. 

The statement required to be made to the International Bureau under 
article 5 of the agreement (refusal of protection to the mark in a coun- 
try) shall be forwarded by it without delay to the Government of the 
country of origin and to the owner of the mark. 

Article 7. 

Subsequent changes in the ownership of a mark of which the Inter- 
national Bureau has been notified under article 9 of the Agreement shall 
be entered on the register of the International Bureau. The latter 
shall send notice of these to the contracting Governments and publish 
them in its journal. 

Article 8. 

Six months before the expiration of the twenty years' protection the 
International Bureau shall give official notice thereof to the Govern- 
ment of the country of origin and to the owner of the mark. 

The formalities to be complied with for the renewal of the Interna- 
tional registration shall be the same as in case of an original registra- 
tion, except that it will not be necessary to furnish an electrotype. 

Article 9. 

At the beginning of each year the International Bureau shall prepare 
a statement of the expenses of all kinds which have been incurred by it 
during the preceding year in the international registration of marks. 
The amount of these expenses shall be deducted from the total sum 
received from the Governments as fees for the International registra- 
tion, and the excess of receipts shall be divided equally between the 
contracting States. 

Article 10. 

The collective notification required under article 11 of the agreement 
shall contain the same statements as the notification provided for by 
article 4 of these rules. 

Article 11. 

The present rules shall go into operation from the day on which the 
Agreement of April 14, 1891, is put in force. 

The contracting States may always adopt, by agreement, in accord- 
ance with the provisions of article 10 of the said Agreement, such 
modifications as may seem necessary to them. 



166 revision of statutes eelating to patents, etc. 

Section 6. 

eeport of the international bureau on the international registration 
of trademarks, for the years 1893-1897, including forms used in 

INTERNATIONAL REGISTRATION. 

[Translated for this report by Mr. Greeley.] 
INTRODUCTORY STATEMENT. 

Formerly marks of manufacture or commerce were required to be 
used by producers and traders as an assurance of their responsibility 
in case of fraud, and consequently as in effect a guaranty to the con- 
sumers against deception and adulteration. But such a system could 
not be carried out except through a government supervision of indus- 
tries which disappeared at the close of the last century or early in the 
present. 

In the regime of freedom which followed the previous restraint the 
authority which prevented the abuse of the mark by the proprietor 
disappeared, leaving the public to punish such abuse by simply refus- 
ing to receive inferior products. But at the same time the change left 
the field open to persons disposed to make use of the mark of another 
for purposes of unfair competition; in other words, to use it upon 
products generally inferior in order to dispose of them under the cover 
of the reputation acquired by articles of the same kind, but of good 
quality. This species of fraud causes material injury, especially to the 
producer, who is not only deprived of the opportunity to make sales, 
but finds the reputation of his mark disparaged and destroyed in the 
estimation of his customers. On the other hand the consumer is doubly 
deceived; first, as to the quality of that which he has bought, and sec- 
ondly, as to the real value of the mark as to which he is misled. It 
is therefore of the greatest importance, both on moral and economic 
grounds, to give to producers and traders the means of preventing 
unlawful use of the marks which they employ to distinguish their 
goods. There should be no hesitation in considering and enacting laws 
providing for this protection which shall rest upon a principle very 
different from that of the old regime. The mark need no longer guar- 
antee the public against the making of inferior goods by the manu- 
facturer; it should become a means of protection of the latter against 
the unfair competition of his business rivals, and at the same time 
should permit the consumer to choose between products each bearing 
a mark of known reputation. 

It is thus that the protection for marks of manufacture originated 
during the first half of the present century in nearly all civilized 
countries. But although many products are consumed in the country 
in which they are manufactured and are consequently within the con- 
trol of one and the same law, there are others which find their market 
abroad and which pass under the jurisdiction of foreign laws. Though 
protected in the country of their origin, the marks placed on these 
products cease to be protected when they have passed beyond the fron- 
tier and may be imitated with impunity in the market where they are 
sold. Yet it is clear that each country has an interest in protecting the 
marks of foreigners, both because while protection may be refused in 
the interest of the producer who owns the mark, it is still necessary to 
take into account honest dealing, which recognizes no particular coun- 
try and is clearly interfered with by the counterfeiting of marks, and 



INTERNATIONAL REGISTRATION OF TRADEMARKS. 167 

because it is a matter of public interest that the consumer in the country 
should be protected against the deceit practiced by those who counter- 
feit such marks. It takes some time to impress upon the public these 
very simple principles, but little by little we see the idea of Interna- 
tional protection extending, both through the effect of domestic leg- 
islation which provides for the protection of foreigners, generally 
as a measure of reciprocity, and through the effect of treaty provi- 
sions which formally establish this reciprocity between two particular 
countries. 

This important progress has too often been more or less neutralized 
by radical differences between the laws of different countries. It 
happens, for instance, that in certain countries all sorts of devices are 
considered registrable marks — signs, words, letters, numbers, repre- 
sentations, used alone, or even the form of the product or its wrapper. 
In other countries only arbitrary signs are registrable. It results that 
many marks protected in the former countries can not be in the latter. 
A means for remedying this difficulty has been found in stipulating in 
treaties that each of the contracting States should bind itself to accept 
as they are {Ijelle quelle) the marks protected in the other State, except 
such as are clearly contrary to public order or to existing rights legiti- 
mately acquired. This system finds expression in article 6 of the 
International Convention of 1883, a convention which has for its pur- 
pose — 

First. To constitute by a single agreement a vast territory in which 
the right to protection is assured for all the marks protected in any 
one of the contracting States. 

Second. To give to these marks a status by which they are not 
subjected to the forfeiture which would otherwise result from the 
difference in the laws of the several States. 

Third. To establish for the advantage of the applicant for registra- 
tion a period of priority during which his successive applications for 
registration are considered as having been made on the date of the 
first application. 

The progress attained in this matter between the years 1860 and 
1883 has been very considerable. Yet it has been impossible to avoid 
certain material obstacles which place in the way of protection of 
marks, difficulties very often insurmountable. For instance, each of 
the several laws requires in the interest of the public that all marks 
to be protected shall be recorded on a special register after compli- 
ance with certain formalities of filing and publication and the pay- 
ment of a specified fee. In order to obtain throughout the world a 
recognition of his right, the proprietor of a mark must register it in 
every country which will receive it. In order to do this it is neces- 
sary to ascertain in detail the requirements of each law, to prepare the 
necessary documents, such as petitions, descriptions, powers of attor- 
ney, etc., in the language of the particular country, to file the applica- 
tion, furnish the electrotype blocks (cliches), pay the prescribed fees, 
etc. All this is sufficiently difficult to do in a neighboring country 
with which intercourse is frequent, and becomes almost impossible 
to do in distant countries. The applicant must in such cases have 
recourse to special agents, who effect the filing through their corre- 
spondents. But the employment of these intermediaries means great 
expense, as will be seen from the following table in which is shown, 
first, the official fees required in each of several countries for each 

S. Doc. 20 12* 



168 REVISION OF STATUTES RELATING TO PATENTS, ETO. 

registration of a mark; and, second, the agents' fees charged by two 
agents — one in France and the other in England. 

[In this table the value of the franc is roughly estimated at 80.20. The correct value is $0,193.] 



Countries. 



Government fee. 



Agents' fees. 



In France. 



In England. 



France 1 .... 

Belgium 

Brazil 

Spain 

Italy 

Netherlands 

Portugal 

Switzerland 

Total . 



Francs. 
9 (81. 
10 (2. 
17 (3. 
25 5. 
50 (10. 
20 (4. 
14 (2. 
20 (4. 



Francs. 
45 ($9.00) 



100 
225 
150 
150 
200 
185 
90 



(20.00) 
(45.00) 
30.00) 
(26. 00) 
(40.00) 
(37.00) 
(18. 00) 



Francs. 
120 ($24.00) 
100 (20.00) 



200 
200 
150 
150 
100 
50 



(40. 00) 
(40.00) 
(30.00) 
(30.00) 
(20.00) 
(10.00) 



165 (33.00) 



1,125 (225.00) 



1,070 (214.00) 



1 France does not require a registration fee, but it is necessary to pay for each registration the cost 
of recording the papers, a stamp tax, and 1 franc for drawing up the papers. These several expenses 
amount to about 9 francs. 

In preparing this table there has been no intention to exaggerate the 
agents' fees. It is possible that the figures given represent, after de- 
ducting actual expenses, no more than reasonable remuneration. But 
it is none the less true that not a few manufacturers and traders are 
discouraged, perhaps by the difficulties and delays which are inevitable 
if agents are not employed, perhaps by the fees charged by them if 
they are employed. The effect will be understood by comparing the 
number of registrations by citizens or subjects and by foreigners in 
the principal importing and exporting countries. The following table 
shows in this matter some facts of interest: 



Countries. 



Year. 


Marks of 
Citizens 


Marks of 
foreign- 




subjects. 


ers. 


1896 


7,833 


1,048 


1893 


1,612 


316 


1891 


111 


58 


1891 


437 


77 


1895 


7,415 


521 


1891 


4,022 


203 


1895 


371 


2,452 


1891 


100 


HI 


1891 


33 


49 


1891 


185 


112 


1893 


91 


102 


1892 


14 


12 


1891 


113 


51 


1892 


447 


161 



Remarks. 



Germany 

Austria 

Brazil 

Spain 

France 

Great Britain 
Hungary 

Italy 

Norway 

Netherlands . 

Portugal 

Servia 

Sweden 

Switzerland . 



Of which 132 marks were registered under 
the international registration. 

Of which 2,083 were marks previously reg- 
istered in Austria. 



It is to be noted that the same mark registered simultaneously in a number of countries may figure 
more than once in this table. 

Such results can not but suggest the idea of simplifying the proced- 
ure and of seeking means of facilitating and rendering less costly the 
international registration of marks. The congress assembled in Paris 
in 1878 expressed the following opinion on this subject: 

It is desirable that the fihng of applications for registration of marks should be 
effected simultaneously at the local registry office and at the consulates of the differ- 
ent foreign countries. 

Agreeing with this opinion, the Belgian legislature the following 
year authorized the Government to permit, under such conditions as 



INTEENATIONAL KEGISTEATION OF TRADEMARKS. 169 

might be determined, the filing of applications and the payment of 
fees at Belgian consulates in foreign countries. (Law of April, 1879, 
art. 19, par. 2.) This example afforded, as is evident, but a partial 
and incomplete solution of the question. It seemed, moreover, to 
involve so much difficulty that an eminent German jurist. Professor 
Kohler, expressed the view in 1884 that, while desirable, a solution of 
the question was far from being realized. Nevertheless, it was at 
that time much nearer successful solution than Professor Kohler imag- 
ined. The congress of 1878, which was animated by a remarkably 
progressive spirit, adopted a second expression of opinion in the 
following language: 

The congress expresses the opinion that the formality of registration of trade- 
marks should be placed under such international control that it shall be sufficient 
for the owner of a mark by registering it in a single State to secure protection there- 
for in all the other contracting States. 

This proposition was met by administrative and judicial difficulties 
which were almost insurmountable. It was not then possible for 
marks to be admitted to registration as originally registered {felle 
quelle)^ but the opinion had none the less the merit of advancing a 
new principle of great importance. 

In 1878 there was no union of States under the control of one and 
the same international regulation. But by the creation in 1883 of the 
industrial Union the situation was wholly changed and the idea 
expressed by the Congress of 1878 appeared at once under a new 
and more precise form. At the conference of the Union in Rome in 
1886 the Swiss delegates presented a scheme for the international 
registration of marks through the central bureau of the Union at Berne, 
a registration which would have the effect of enlarging by a simple 
and inexpensive arrangement the extent of the territory within which 
protection would be accorded to the marks under consideration. The 
Italian Government, charged with preparing the conference, studied 
the plan very thoroughly, amended it to advantage, and supported it 
vigorously. The delegates of the several States understood fully the 
importance of the plan and realized that it was a decided step in 
advance and a development of benefit to the Union; but as it involved 
a proposition entirely new which the governments which they repre- 
sented had not had time to consider, they did not discuss the matter 
exhaustively and contented themselves with adopting, at the session 
of May 8, the following resolution: 

The conference considering that the arrangement prepared by Switzerland and 
amended by Italy merits profound study on the part of the several States of the 
union, refers the matter to the next conference. 

The matter was thus seriously taken up and did not fail to be studied 
in all its details. The idea was naturally received with much favor, 
and the general opinion was very clearly expressed in the following 
resolution almost unanimously adopted by the Congress of Industrial 
Property, assembled in Paris in 1889: 

It is desirable that an international regulation be established in respect to trad>e- 
marks of such a character that a mark, registered in a country which is a party to 
the International Union, may be protected in all the contracting States by means of 
the international bureau of the union. 

In the following year the second of the periodical conferences of 
the Union assembled at Madrid. In the interval the Swiss Govern- 



170 EEVISIQN OF STATUTES RELATING TO PATENTS, ETC. 

ment had carefully considered and revised its proposed agreement. 
It was presented at the conference in a form much more complete and 
definite. Further than this, it had been submitted in advance to the 
preliminary study of the different Governments of the Union. It was 
at the conference discussed in its details, modified on some points, and 
finally adopted by nearly all of the delegations attending the confer- 
ence. Submitted for acceptance to sixteen of the Governments of the 
Union, it was agreed to by but nine of them, who signed the agreement 
April 14, 1891, but of these five only finally ratified the agreement in 
June, 1892. These were Belgium, Spain, France, Switzerland, and 
Tunis. Since that date Brazil, Italy, the Netherlands, and Portugal 
have ratified it, so that there are now nine members of the Union for 
the international registration of trade-marks. 

This Union includes to-day a population of 182,000,000 souls; the 
aggregate value of its commerce is estimated by statisticians at about 
22,000,000,000 francs (about $4,400,000,000), of which 12,000,000,000 
(about $2,400,000,000) are imports and 10,000,000,000 (about $2,000,- 
000,000) are exports. This represents an area of protection and a 
grand total of interests protected sufficiently imposing, especially as 
among the States which belong to this Union are some in which manu- 
facturing is carried on very extensively. 

INTERNATIONAL REGISTRATION ORGANIZATION. 

The international registration requires a legal organization and a 
material installation. The first is regulated by the agreement of April 
11, 1891, in the following manner: 

The formality of international registration does not secure for the 
registrant any special or new right, but only the protection that would 
be given him by registration simultaneously effected in the several 
contracting States. But this protection is secured by the simple means 
of one single registration. It follows that the respective situations of 
different persons who are interested in the question of ownership of a 
particular mark so registered are not changed. They remain precisely 
the same as if the registration had been effected separately in the 
several States which are members of the union. Then results this 
important consequence, that proceedings necessary either to enforce 
the rights of the registrant or to protect the rights of others can be 
carried on in the same manner in each of the countries of the Union 
as if they concerned a mark registered only in the particular country. 
The rights of public authority are, so far as they are concerned, suffi- 
ciently cared for. Each country reserves an absolute right, within 
the limits prescribed by the international convention, to refuse pro- 
tection of its laws to all marks contrary to good morals, to public 
order, or to prior existing rights of individuals. But such marks as 
are not obnoxious to any of these grounds of refusal should be pro- 
tected as they are {f^elle quelles)^ even though they are not such as are 
within the requirements of the domestic law. This concession is 
necessary and inevitable under an international arrangement, for, 
without it, the difference in the legislative requirements would too 
often destroy the effect of whatever is done under conventional 
agreements. 

The protection assured under the national registration combined with 
the international registration begins to run from the day the formal i- 



INTERNATIONAL REGISTRATION OF TRADEMARKS. iTl 

ties of the latter have been completed and continues during a period of 
twenty years; but it is understood that if the protection ceases to be in 
force in the country of origin it ends at the same time in all the rest 
of the Union. This is a natural consequence of the principle by virtue 
of which the registrant secures a peculiar right which, taking its origin 
in the country in which the mark is first registered, is extended under 
the convention to the entire territory of the union. All the modifica- 
tions or other matters which affect the property right in the mark 
should have effect throughout the whole of this territory. 

So far as the formalities of registration are concerned, they are under 
the arrangement made very simple. Whoever wishes to secure inter- 
national registration for his trade-mark addresses himself to the Gov- 
ernment of his country and only to that Government. He furnishes 
to his Government, together with his application, certain elementary 
statements (name, address, purpose of the mark) ; an electrotype (cliche) 
or a description of the mark written in French,^ and pays to it two 
fees; one to cover the expense of home registration,^ the other being an 
international fee. The latter has been fixed at 100 francs [about ^20.] 
The above-mentioned statements are written upon a special form.^ 

This form is sent in duplicate to the International Bureau, which 
enters the mark in the special register established under the regula- 
tions annexed to the Arrangement of Madrid, publishes it by means of 
the electrotype which it has received, and gives notice of the regis- 
tration to the several Governments of the Union.* It also notifies 
them of the cancellations and changes of which it is officially informed. 
The registrants receive as a certificate proving the fact of registration 
one of the above-mentioned forms properly filled out and counter- 
signed by the international bureau. Besides this, in the six months 
preceding the expiration of the period of protection of twenty years 
the International Bureau will notify the Government of the country 
of origin and the owner of the mark of the approaching termination 
of his protection, in order to facilitate renewal, which may be effected 
in the same way as the original registration. As the Bureau preserves 
the electrotypes of the registered marks it is not necessary to send a 
new one in case of renewal. 

All these formalities were so carefully worked out in the preparation 
of the arrangement of 1891 that the service has proceeded with per- 
fect regularity. No material modification has been suggested by the 
practical experience of more than four years and no complaint has 
been made concerning the practical operation of the service. This 
gives good reason to believe that the combination established in 1891 
is satisfactory, not only in principle, but also in its practical operation. 

RESULTS OF THE INTERNATIONAL REGISTRATION. 

The operation of the international registration began January 1, 
1893. Hardly completely understood at its beginning, the service 

^ It is proposed to do away with the permission to substitute a description for the 
electrotype. 

' Each Government is free to fix the amount of this fee. It is, in Spain, 25 pesetas; 
in France, 25 francs ($5) ; in Italy, 60 lire ($20) ; in the Netherlands, 5 florins; in Swit- 
zerland, 5 francs ($1) , and in Tunis, 1 franc ($0.20) . In Belgium, there is no fee. 

'This is furnished to the several Governments by the International Bureau. 

* Specimens of these forms used by the International Bureau are given herewith. 
See page 40. 



172 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

could naturally show but small results for the first few months. 
Besides, many of the countries which are now members of the Union 
had not then ratified the arrangement, and others bad not at first 
arranged the details of the procedure necessary for receiving applica- 
tions for international registration. The number of registrations 
effected during the year 1893 was for these several reasons only 76. 
But during that year a full publication of the matter was arranged for 
by the International Bureau, with the assistance of many of the Gov- 
ernments of the Union, for the purpose of informing the public of this 
new means of protection. The result was that in 1894 the number of 
marks registered was increased to 231. The year 1895 brought about 
the same number (229), but in 1896 the number of registrations 
reached 304. The following table shows, by countries and by years, 
the number of registrations effected during the first four years: 





Marks registered. 


Registra- 
tion re- 
ported up 
to 1897. 


Trans- 
fers. 


Country of origin. 


1893. 


1894. 


1895. 


1896. 


Total. 


1897 (to 
Sept. 15). 


Belgium 


8 


6 


16 


16 


46 


14 






Brazil 






Spain 




7 
96 


2 
99 

6 
60 


■"'i45' 
4 
69 


9 

366 

10 

216 




42 




France .... 


26 


194 

2 

40 




Italy 






Netherlands 


10 


77 


13 
4 


4 


Dutch Indies 




Portugal .... . . . 
















Switzerland 


31 

1 


45 


46 


70 


192 


54 

1 


8 


15 


Tunis 












- 






Total 


76 


231 


229 


304 


1840 


304 


67 


19 







iThe total number of registrations up to October 31, 1898, is 1,645. 

These figures are not large, but they are not unsatisfactory, if it is 
considered that international registration is of recent creation, that it 
applies as yet to but a small number of countries, of which but few 
have a very active export trade, and that it is not yet as well known 
to the public as it will be in the future. 

In this connection it should be said that a number of Governments 
have taken steps to extend among manufacturers and traders a knowl- 
edge of the international registration. They have sent circular letters 
to chambers of commerce, inserted notices in official journals, circu- 
lated the publication of the International Bureau^ — the Marques Inter- 
nationales — and distributed the notices prepared for general circulation 
by the bureau in the different languages of the States of the Union. All 
this has produced good results; but it takes a long time for an institu- 
tion so new and unusual to become thoroughly known and be made of 
use generally. It is necessary also to remember that, intended to 
meet special requirements, the realization of its importance will always 
be limited by these requirements. 

RECEIPTS AND EXPENDITURES OF THE REGISTRATION OFFICE. 

The statement of receipts of the international registration shows two 
items of importance which differ widely in amount. The first is made 
up of the fees prescribed by the Arrangement, which amounts to 100 
francs ($20) for each mark registered. The second item comprises 
certain small amounts received from the sale of a certain number of 
copies of the publication Les Marques Internationales^ in which are 



INTERNATIONAL REGISTRATION OF TRADEMARKS. 



173 



printed all the marks registered by the bureau. The expenses include 
in the first place the special items of expense directly incurred for the 
registration service. Besides this, the International Bureau, intrusted 
with this service, charges against it a certain proportion of the general 
expenses, as is reasonable, since it is necessarily the most important of 
its general expenses. By reason of this combination the international 
registration costs relatively little and shows an excess of receipts, which, 
divided among the contracting States, compensates them to a consider- 
able extent for the loss which results from the substitution of the single 
registration for the separate registration in each country. The fol- 
lowing table shows the receipts and expenses for the years 1893-1896; 

EXPENDITURES. 
[In francs. Franc =$0,193.] 



Year. 


Marks 
regis- 
tered. 


Salaries, 


Rent and 
supplies. 


Printing. 


Miscella- 
neous. 


Total. 


Average 
per mark. 


1893 


76 
231 
229 
304 


8,450 
4,880 
4,600 
5,110 


1,726.90 
852.10 
971.80 
930.00 


2,155.75 

3,563.85 
3,324.55 
4,156.80 


203.45 
401.40 
424.12 
894.95 


7,536.10 
9,697.35 
9,320.47 
10,591.75 


99.16 


1894 


41.98 


1895.. 


40.70 


1896 


84.84 






RECEIPTS. 


Year. 


Marks 
regis- 
tered. 


Interna- 
tional 
fees. 


Journal. 


Miscella- 
neous. 


Total. 


Per 
mark. 


Returned 
to each 

Govern- 
ment. 


1893 


76 
231 
229 
804 


7,600 
23,100 

22,900 
30,400 


200.00 
177.00 
204.90 
114.55 




7,800.00 
23,277.40 
23,108.90 
30, 519. 55 


102.63 
100.77 
100.91 
100.39 




1894 


0.40 
4.00 
6.00 


1,900 


1895. 


1,700 
2,400 


1896 









The inquiry has been frequently made of the International Bureau 
whether in case of the simultaneous application for registration of a 
number of marks there could not be some reduction of the fee. As 
the arrangement expressly prescribes the fee of 100 francs ($20) for 
each mark registered, the response has been in the negative. It may 
be well to consider whether, in the interest of commerce and in accord- 
ance with the spirit of the Arrangement, it is not expedient to permit 
a reduction of the fees when a number of marks are presented for 
registry by the same owner. This would perhaps have the effect of 
causing those who use a number of marks to decide to register all of 
them, instead of making a selection which might subsequently prove 
to have been unwise. There is no way of determining what other 
effect would result from this change. If such a plan had been in force 
during the year 1896, it would have been to the advantage of 42 regis- 
trants and affected 105 marks, about 35 per cent of all the marks 
registered that year. And if, for example, the reduction had been 50 
per cent upon all marks except the first one presented, the receipts for 
the year would have been reduced for the year 1896 by 5,250 francs. 
These are the only facts that can be presented on this point. It is in 
other respects to be considered with reference to the actual condition 
of affairs. It can not be stated certainly what effect this would have 
upon the different financial arrangements. It is generally true that 
when in an arrangement of this kind there is a reduction of fees, it 
results in a corresponding increase in the use made of it by the public. 



174 KEVISION OF STATUTES EELATING TO PATENTS, ETC. 

It is quite possible that the sacrifice of the fees in case of a number of 
registrations would be balanced by increase in the number of registra- 
tions. From another point of view, there can be no question that a 
change of this kind is fully in accord with the spirit of the Arrange- 
ment, the main purpose of which is to facilitate international protec- 
tion of marks against unlawful use. And as an increase in the number 
of marks registered tends toward this result, it seems that then there 
is every reason for securing this increase, even though it is secured by 
a diminution of receipts. 

CLASSIFICATION OF INTEKNATIONAL MARKS. 

The number of marks already registered is so large as to render 
necessary, in order to facilitate searches, a systematic classification. 
All the important Governments have arranged the classification of 
marks registered by them with this purpose in view. The generally 
accepted basis of the classification is the nature of the article of 
merchandise on which the mark is placed. But the subdivision of 
products under the different classes is not everywhere the same. 
There are in practical use three distinct plans. Under the first, 
products are arranged in a systematic order — that is, by principal 
classes according to their character or their purpose; under the second, 
the alpnabetical arrangement is followed; under the third, a practical 
order is followed — that is, all those which are manufactured or sold in 
the same line of business are grouped in the same class. ^ 

In establishing the classification of international marks, a careful 
preliminary study has been made of the classification followed in prac- 
tice by the Governments of the principal countries. It has been 
decided to adopt an arrangement of main classes which rests on this 
broad plan — to arrange in a progressive order: (1) Raw materials or 
those only partly manufactured; (2) machines and instruments which 
are used to work such materials or to transport them; (3) materials 
used for building purposes; (4) furniture; (5) fabrics and clothing and 
accessories; (6) fancy goods; (7) articles of food; (8) articles pertain- 
ing to education and the liberal arts. The field of human activity 
being thus covered, it remains to place in each category the articles of 
manufacture or use which belong under it, by making the necessary 
number of classes to facilitate the classification of marks and the search, 
without unnecessary classes. There have been established thus nine 
main subclasses, as follows: 

I. Raw materials, agricultural products, 7 classes. 
II. Partly manufactured materials, 8 classes. 

III. Tools, machinery, carriages, 13 classes. 

IV. Construction, 7 classes. 

V. Furniture and household articles, 8 classes. 
YI. Thread, fabrics, carpets, hangings, clothing, and accessories, 12 classes. 
VII. Fancy goods, 5 classes. 
VIII. Foods, 11 classes. 
IX. Education, sciences, fine arts, and miscellaneous, 9 classes. 

* It is to be noted that in some countries the registration determines the class— that 
is, the amount of fee paid is the basis of classification. So far as international regis- 
tration is concerned, there is no idea of introducing such a restriction. On the con- 
trary, the owners of marks ought to be free to cover all of the field that they find it 
necessary. The international classification has only this purpose, and this must be 
clearly understood, to offer to those interested a simple and prompt means of know- 
ing where they stand among the constantly increasing number of marks. 



INTERNATIONAL REGISTEATION OF TRADEMARKS. l75 

In all, 80 classes, which should cover all known products, the eight- 
ieth (miscellaneous) being reserved for any unusual articles which 
can not be otherwise classified. They include in condensed form all 
the subjects grouped in the classification adopted in the principal 
industrial countries. 

By means of this classification we have endeavored to secure these 
two essential purposes — first, to facilitate searches in the collection of 
registered marks; second, to render it possible, so far as may be, for 
each applicant for registration to choose the class which corresponds 
best with the requirements of his manufacture or trade. In the great 
majority of cases the statements furnished by the applicants in filing 
their marks are within the limits of a single class and in general are 
even more restricted. We have completed the classification by means 
of an alphabetical list of products, with reference to the class to which 
each belongs, so that searches are made easy. 

Morel, Di/rector. 

Berne, Septemher^ 1897, 

Note. — We reproduce hereafter the forms used in international registration. All 
these forms are furnished by the national Governments or by the Bureau itself, 
according to the case, and not by the applicant. 



176 REVISION OF STATUTES EELATING TO PATENTS, ETC, 

Forms used in the international registration of t/rademarhs. 

[Translated for tliis report by Mr. Greeley.] 

I. 

International Registration op Trademarks. 



APPLICATION FOR REGISTRATION. 

1st. country of origin of the mark. 
Switzerland. 




(Place where the mark 
should be pasted or af- 
fixed.) 



2nd. owner of the mark. 

Name: Mermod Brothers. 
Business: Manufacturers. 
Address: St. Croix. 

8ED. USE OF THE MARK. 

Statement of products: Music Boxes and Parts of Music Boxes. 



4th. registration IN THE COUNTRY OF ORIGIN. 

Serial number: 8260. Date: April 9, 1896. 

The undersigned Government certifies that the above mark has been duly regis- 
tered in Switzerland, and that the statements relative thereto under numbers 2 to 
4 agree with those of the national register of marks. 

It requests the entry of this mark in the International register. 

Berne, January 5, 1897. 



Stamp of 

the Swiss 

Government. 



Federal Bureau of Industrial Property, 
(Signed) Haller, 

Diredor. 



The several conditions on the back of this form having been complied with on this 
date, the mark has been entered in the International Register as No. 842. 



Berne, January 6, 1897. 



Stamp of the 

International 

Bureau. 



International Bureau oflnduMrial Property, 
(Signed) Morel, 

DirecLat, 



INTEENATIONAL EEGISTRATION OF TEADEMARKS. 177 

[Reveesb of Preceding Form.] 

CONDITIONS OF EEGISTEATION IN THE INTERNATIONAL BUEEAU. 

Applications for registration filed by the Governments of the contracting States 
must, in order to be regular, be filed in duplicate and be accompanied by — 

1. An electrotype of the mark (dimensions: Minimum, 15 mm.; maximum, 10 
cm., in length and width; height, 24 mm.). 

2. An order for 100 francs, the international fee. 

Information respecting the international registration of trademarks, 
(International agreement of April 14, 1891.) 

International registration is effected through the Government of the country of 
origin. (Art. 1 of the arrangement.) 

It assures legal protection to marks in the countries which have adhered to the 
international arrangement of April 14, 1891, as weU as in those which adhere here- 
after. (Arts. 1 to 11.) 

Within a year from the notice by which the international bureau announces the 
registration of a mark, the Governments which are authorized by their laws to do so 
may declare that protection can not be accorded to the mark in with their territory. 
This declaration is transmitted by the international bureau to the Government of the 
country of origin and to the owner of the mark, who has the same recourse as if 
the mark had been filed directly in the country in which protection is refused. 
(Art 5.) 

The protection under international registration is for 20 years and may be renewed 
indefinitely by complying with the requirements prescribed for the original applica- 
tion. At the same time, the international protection depends upon the continued 
existence of the right to protection in the country of origin of the mark, and suspen- 
sion of this right carries with it, ipso facto, suspension of international protection. 
(Arte.) 

TERRITOBIAL EXTENT OP THE PROTECTION AT THE DATE OP THE REGISTRATION OF THE 
MARK WHICH IS THE SUBJECT OP THE PRESENT CERTIFICATE. 

At this date the arrangement of April 14, 1891, concerning the international regis- 
tration of trade-marks is effective in the following countries, viz: Belgium, Brazil, 
Spain (together with Cuba, Porto Rico, and the Philippines), France, with Algeria 
and colonies; Martinique, Guadeloupe and dependencies, Reunion and dependency 
(St. Marie, of Madagascar) , Cochin China, St. Pierre and Miquelon, Guiana, Senegal 
and dependencies, The Ivory Coast, Dahomey and dependencies, French Guinea, 
French Congo, Mayotte, Nossi-Be, French establishments in India (Pondichery, 
Chandemagor, Karikal, Mah6, Yanaon, etc.). New Caledonia and dependencies, 
French establishments in Oceanica (Tahiti and dependencies) , Obock and Madagas- 
car, Italy, Netherlands (with the Dutch Indies, Surinam and Curasao), Portugal (with 
the Azores and Madeira) , Switzerland, and Iunig« 



178 REVISION OF STATUTES RELATING TO PATENTS, ETO. 

II. 

INTERNATIONAL BUREAU OF INDUSTRIAL PROPERTY. 

International Registration op Trademarks. 



No. 312. 
3 enclosures. 

ACKNOWLEDGMENT OF THE RECEIPT OF APPLICATIONS FOR REGISTRATION. 

Received of the special office for Industrial Property of Switzerland, three appli- 
cations for registration (in duplicate) with electrotypes (cliches) and the sum of 300 
francs, the amount of the international fees at the rate of 100 francs for each mark. 

National registration Nos. 8260 8416/17. 

International registration No. 842 to 844. 

A specimen of each of the applications for registration bearing the stamp and sig- 
natures of the undersigned bureau, accompanies the present acknowledgment. 

International Bureau of Industrial Property. 
(Signed) Morel, 

Director, 
Berne, January 6, 1897. 



INTERNATIONAL BUREAU OF 
INDUSTRIAL PROPERTY. 

International Registration 
op Trade-Marks. 



Notification: 
No. 178. 

Enclosures: 

8 copies of marks. 
1 notice of transfer. 
1 notice of cancellation. 



III. 

NOTIFICATION 

ADDKESSED TO THE 

SPECIAL OFFICE FOR INDUSTRIAL PROPERTY OF 
THE STATES ADHERING TO THE INTERNA- 
TIONAL ARRANGEMENT OF APRIL 14, 1891. 



The Bureau has registered since the last notifica- 
tion, sent on January 5 : 
8 marks. No. 842 to 849. 
1 transfer, No. 19. 
1 cancellation, No. 2. 

It notifies the Governments of the contracting 
States of the above, sending them, in accordance 
with the custom, the documents relating thereto. 
Berne, January 12, 1897. 

International Bureau of Industrial Property. 
(Signed) Mokel, 

Director. 



INTERNATIONAL REGISTRATION OF TRADEMARKS. 

IV. 

INTEENATIONAL BUREAU OF INDUSTRIAL PROPERTY. 
International Registration op Trademarks. 



179 



No. 842. Jan. 6, 1897. 

MERMOD BROTHERS, MANUFACnjRERS, ST. CROIX, SWITZERLAND. 
(The print reproduced in Form No. 1 is also placed here.) 
MUSIC BOXES AND PARTS OF MUSIC BOXES. 
The above mark has been registered in Switzerland, April 9, 1896, as No. 
8260. 

Changes since registration. 



Dates— 


Nature of the 
change. 


Of the notice from the Inter- 
national Bureau. 


Of the publication by the Inter- 
national Bureau. 

















INTERNATIONAL BUREAU OF INDUSTRIAL PROPERTY. 

International Registration of Trade-Marks. 



Mark No. 293. Notification No. 19. 

TRANSFER OF MARK. 
It appears from a communication from the Netherlands Government, under date 
of January 4, 1897, that the international mark No. 293, registered in the name of 
"W. H. van Hasselt, at Rotterdam, has been transferred to the Vereenig-de Zeep- 
fabrieken (Societe Anonyme) at Rotterdam, according to the entry in the register 
of the Netherlands Government on January 12, 1897. 



VI. 

INTERNATIONAL BUREAU OF INDUSTRIAL PROPERTY. 

International Registration of Trade-marks. 



Mark No. 532. 



Notification No. 2, 



CANCELLATION OF MARK. 



It appears from a communication from the French Government under date of 
January 8, 1897, that the international mark No. 532 registered in the International 
Bureau September 15, 1895, in the name of Ed. Vernet of Rouen, was canceled 
under date of January 3, 1897. 

(Communicated to the Governments January 12, 1897.) 



180 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

VII. 



INTERNATIONAL BUREAU OF 
INDUSTRIAL PROPERTY. 

Ijtternational Registration 
OP Tbade-Marks. 



No. 34. 

Enclosure. 

Copy of mark. 

Article 5 of the arrangement of 
April U, 1891 : 

In the countries in which 
such action is authorized by- 
law the Governments to which 
the International Bureau has 
given notice of the registration 
of the mark shall have the 
right to declare that protection 
can not be accorded to that 
mark in that country. They 
must exercise this right within 
a year from the receipt of 
notice under article 3. 

Such declaration transmitted 
to the International Bureau 
will be sent by them without 
delay to the Government of 
the country of origin, and to 
the owner of the mark. The 
persons interested shall have 
the same opportunity for re- 
course that they would have if 
the mark had been filed di- 
rectly in the country where 
protection is refused. 

Take notice. 



NOTICE OF REFUSAL OF PROTECTION. 



Berne, January 25, 1897. 
To the Bureau of Industrial Property, Brussels, and 
to Messrs. X. & Co., at V.: 

It appears from a communication received from 
the special service of industrial property of Spain 
that, in that country, legal protection can not be 
accorded to the following mark, registered : 



In Belgium : 
Mayl, 1896, No. 000 



In the bureau inter- 
national : 
Sept. 1,1896, No. 000 



Herewith is a copy of this mark. 

The reasons for refusal are given below. 
In sending this communication to the Govern- 
ment of the country of origin and to the owner of 
the mark, the undersigned bureau calls attention to 
article 5 of the arrangement of April 14, 1891, the 
substance of which is found in the margin. 

The refusal will be considered final by the inter- 
national bureau until it has been notified that ap- 
peal has been granted. 

International Bureau of Industrial Property y 
(Signed) Morel, 

Director. 

THE REASONS FOR REFUSAL OF PROTECTION: 
[Extract from the letter from the Government of Spain.] 

Mark refused because of the registration of an 
identical mark for the same purpose under date of 

June 4, 1875, No , in favor of B. and Co., 

atZ 



INTERNATIONAL REGISTRATION OF TRADEMARKS. 181 

VIII. 
INTERNATIONAL BUREAU OF INDUSTRIAL PROPERTY. 
International Registration of Tkade-Marks. 



MONTHLY REPORT No. 49. 

The international bureau addressed to the Government of Belgium, January, 1897: 

3 certificates of registration No. 846 and 856/7. 

4 notices of registration No. 177 to 180. 

1 ** of refusal of protection No. 34. 

2 ** of assignment of mark No. 19. 
1 " of cancellation of mark No. 2. 



The undersigned Government acknowledges the receipt of the documentg. 



(Signed) A. Amelin, 

Diredor, 



stamp of the 

Belgian 

Administration. 



Chapter III. 
PROTOCOLS ADOPTED AT THE BRUSSELS CONFERENCE OF 1897. 



Section 1. 

FIRST FINAL PEOTOCOL TO CONVENTION OF PARIS, MARCH 20, 1883. 



International Union for the Protection of 
Industrial Property. 

PIEST FINAL PEOTOCOL. 

The International Conference of the 
Union for the Protection of Industrial 
Property convened at Brussels, December 
1, 1897, submits to the Governments of 
the States of the union the following 
project: 

Additional act to the convention of March 20, 1885, 
concluded between {enumeration of the contracting 
States). 

The undersigned, duly authorized by 
their respective Governments, have by 
common consent and under reserve of 
ratification agreed as follows: 

Article 3 of the convention shall be as 
follows: 

"Art. 3. Are assimilated to the sub- 
jects or citizens of the contracting States, 
the subjects or citizens of States not form- 
ing part of the union, who are domiciled 
or have bona fide^ industrial or commer- 
cial establishments upon the territory of 
one of the States of the union." 

Article 4 shall be as follows: 

**Art. 4. Anyone who shall have reg- 
ularly deposited an application for a pat- 
ent of invention of an industrial model or 
design of a trade or commercial mark in 
one of the contracting States shall enjoy 
for the purpose of making the deposit in 
the other States, and under reserve of the 
rights of third parties, a right of priority 
during the periods hereinafter deter- 
mined. 

"In consequence, the deposit subse- 
quently made in one of the other States of 
the Union before the expiration of these 
periods can not be invalidated by acts per- 
formed in the interval, especially by an- 
other deposit, by the publication of the 
invention or its working,^ by the sale of 
copies of the design or model, by the em- 
ployment of the mark. 



Union Internationale pour la Protection de 
la PropriitS Industrielle, 

PREMIER PROTOCOL FINAL. 

La Conference Intertionale de P Union 
pour la protection de la propriety indus- 
trielle, convoquee k Bruxelles le P"^ decem- 
bre, 1897, soumet aux Gouvernements des 
Etats de 1' Union le projet dont la teneur 
suit: 



Acte additionnel d la convention du SO mars, 188S, 
conclu entre {enumeration des Etats contractants) . 



Les soussignes, dliment autoris^s par 
leurs Gouvernements respectifs, ont, d'un 
commun accord, et sous reserve de ratifi- 
cation, arrete ce qui suit: 

L' article 3 de la convention aura la 
teneur suivante: 

"Art. 3. Sont assimiles aux sujets ou 
citoyens des Etats contractants les sujets 
ou citoyens des Etats ne faisant pas par- 
tie de 1' union, qui sont domicili^s ou ont 
des etablissements industriels ou commer- 
ciaux effectifs et s^rieux sur le territoire 
de Pun des Etats de P union." 

L'article 4 aura la teneur suivante: 
"Art. 4. Celui qui aura r^gulierement 
fait le d6p6t d'une demande de brevet 
d' invention, d'un dessin ou modele indus- 
triel, d'une marque de fabrique ou de com- 
merce, dans I'un des Etats contractants, 
jouira, pour effectuer le depot dans les au- 
tres Etats, et sous reserve des droits des 
tiers, d'un droit de priority pendant les 
delais determines ci-apres. 

"En consequence, le dep6t ult^rieure- 
ment op^re dans I'un des autres Etats de 
P Union, avant I'expiration de ces delais, 
ne pourra etre invalid^ par des faits ac- 
complis dans I'intervalle, soit, notam- 
ment, par un autre depot, par la publica- 
tion de r invention ou son exploitation, 
par la mise en vente d'exemplaires du des- 
sin ou du modele, par Pemploi de la 
marque. 



1 "Bona fide 
182 



inserted by amendment. ' By a third party (par un tiers) omitted. 



PEOTOCOLS ADOPTED AT BRUSSELS CONFEREISrCE, 189/ 



183 



**The periods of priority above men- 
tioned shall be six months for patents of 
invention and three months for designs or 
industrial models, as well as for trade or 
commercial marks. They shall be aug- 
mented by one month for countries be- 
yond the seas." 

There is inserted in the convention an 
article 4 bis, as follows: 

"Aet. 4 bis. Patents applied for in the 
different contracting States by persons ad- 
mitted to the benefit of the convention 
under the terms of articles 2 and 3 shall 
be independent of the patents obtained 
for the same invention in the other States 
adhering or not to the Union. 

"This provision shall apply to patents 
existing at the tmie of its going into effect. 

"The same rule applies in the case of 
adhesion of new States as to patents al- 
ready existing either in the Union or in 
the new adhering State at the time of the 
adhesion." 

There is added to article 9 two para- 
graphs, as follows: 

"In the States whose legislation does 
not admit of seizure on importation, such 
seizure may be replaced by the prohibition 
of importation. 

"The authorities shall not be required 
to effect seizure in case of goods in transit. ' ' 

Article 10 shall be as follows: 
"Art. 10. The provisions of the pre- 
ceding article shall be applicable to every 
product bearing falsely as indication of 
origin the name of a stated locality when 
this ,indication_ shall be joined to a ficti- 
tious commercial name or a name bor- 
rowed with fraudulent intention. 

"Is reputed interested party every pro- 
ducer,^ manufacturer, or trader engaged 
in the production, the manufacture, or 
the sale of this product when established 
either in the locality falsely indicated as 
place of export, or in the region where 
said locality is situated." 

Article 11 shall be as follows: 
"Aet. 11. The high contracting parties 
shall accord conformably to the legisla- 
tion of each country ^ a temporary pro- 
tection to patentable inventions, to 
industrial designs or models, as well as to 
trade-marks, for the productions which 
may figure at official or officially recog- 
nized international expositions organized 
upon the territory of one of them." 



"Les d^lais de priority mentionn^s ci- 
dessus seront de six mois pour les brevets 
d'invention, et de trois mois pour les des- 
sins ou modeles industriels, ainsi que pour 
les marques de fabrique ou de commerce, 
lis seront augmentes d'un mois pour les 
pays d'outre-mer." 

11 est insert dans la convention tin ar- 
ticle 4 bis ainsi con^u: 

"Aet. 4 bis. Les brevets demand^s dans 
les differents Etats contractants par des 
personnes admises au benefice de la Con- 
vention aux termes des articles 2 et 3, 
seront independants des brevets obtenus 
pour la me me invention dans les autres 
Etats adherents ou non a 1' Union. 

"Cette disposition s'appliquera aux 
brevets existants au moment de sa mise 
en vigueur. 

"11 en sera de meme, en cas d'accession 
de nouveaux Etats, pour les brevets ex- 
istant de part et d'autre au moment de 
1' accession." 

11 est ajoute k Particle 9 deux alineas 
ainsi congus: 

"Dans les Etats dont la legislation 
n'admet pas la saisie a 1' importation, cette 
saisie pourra etre remplacee par la prohi- 
bition d' importation. 

"Les autorites ne seront pas tenues 
d'effectuer la saisie en cas de transit." 

L' article 10 aura la teneur suivante: 
"Aet. 10. Les dispositions de I'article 
precedent seront applicables a tout pro- 
duit portant faussement, comme indica- 
tion de provenance, le nom d'une localite 
d^terminee, lorsque cette indication sera 
jointe a un nom commercial fictif ou 
emprunte dans une intention fraudulense. 
" Est repute partie int^ress^e tout pro- 
ducteur, fabricant ou commergant, engage 
dans la production, la fabrication ou le 
commerce de ce produit, et 6tabli soit 
dans la locality faussement indiquee 
comme lieu de provenance, soit dans la 
region oil cette locality est situ^e." 

L' article 11 aura la teneur suivante: 
Aet. 11. Les hautes parties eontrac- 
tantes accorderont, conformement a la 
legislation de chaque pays, une protection 
temporaire aux inventions brevetables, 
aux dessins ou modeles industriels, ainsi 
qu'aux marques de fabrique ou de com- 
merce, pour les produits qui figureront 
aux expositions Internationales officielles 
ou officiellement reconnues, organisees 
sur le territoirede I'une d'elles." 



^"Producer" (producteur) 'Uhe production^' (la production) ; *^ either * * * or 

in a region where said locality is situated," Soit soit dans la region oil cette localiiS 

est silvee inserted by amendment. 

* '" SJiall grant conformably to the legislation of each country'' (accorderoni conformiment 
d, la legislation de chaque pays), substituted in place of ''Agree to grant" {s^ engage d 
ticcorder), and *^ organized upon the territory of one of them" {organises sur le territoire 
de I'une d'elles) is added. 



S. Doc. 20 13* 



184 REVISION OF STATUTES RELATING TO PATENTS, ETC. 



Article 14 shall be aa lollows: 
"Art. 14. The present convention shall 
be submitted to periodical revision for 
the purpose of introducing improvements 
calculated to perfect the system of the 
union. 

"With this object conferences shall 
take place successively in one of the con- 
tracting States between the delegates of 
said States." 

Article 16 shall be as follows: 

"Art. 16. The States that have not 
taken part in the present convention 
shall be admitted to adhere to the same 
upon their application. 

' ' This adhesion shall be notified through 
thediplomatic channel to theGovernment 
of the Swiss Confederation and by the lat- 
ter to all the others. 

" It shall convey of full right, accession 
to all the clauses, and admission to all the 
advantages stipulated by the present con- 
vention, and shall go into force a month 
after the sending of the notification given 
by the Swiss Government to the other 
Unionist States, unless a later date shall 
have been indicated by the adhering 
State." » 

The present additional act shall have 
the same force and duration as the con- 
vention of March 20, 1883. 

It shall be ratified and the ratifications 
thereof shall be exchanged at Brussels in 
the form adopted for this convention as 
soon as may be, and, at the latest, within 
a period of one year. 

It shall go into effect three months 
after such exchange. 

In witness whereof the undersigned 
have signed the present additional act. 
Done at Brussels, the — of , . 

The respective Governments are invited 
to sign the above project within six 
months; the signature and the exchange 
of ratifications shall take place in the 
manner designated in said additional act. 

Done in one single copy at Brussels, 
December 14, 1897. 

For Belgium: A. Nyssens, L. Capelle, 
Georges De Ro, J. Dubois. 

For Brazil: F. Vieira Monteiro. 

For Denmark: H. Holten Nielsen. 

For Spain: El Marqs. De Bertemati, 
Eduardo Toda. 

For the United States of America: Bel- 
lamy Storer, Francis Forbes. 

For France: Montholon, C. Nicolas, 
Michel Pelletier. 

For Great Britain: Charles B. Stuart 
Wortley, H. G. Bergne, C. N. Dalton. 

For Italy: R. Cantagalli, C. F. Gabba, 
S. Ottolenghi. 



L*article 14 aura la teneur suivante: 
"Art. 14. La presente convention sera 
soumise a des revisions periodiques en vue 
d'y introduire les ameliorations de nature 
§L perfectionner le systeme de F union. 

"A cet effet, des conferences auront 
lieu Buccessivement, dans I'un des Etats 
cpntractants, entre les d^l^gu^s desdits 
Etats." 

L' article 16 aura la teneur suivante: 

"Art. 16. Les Etats qui n'ont point pris 
part a la presente Convention seront 
admis a y adherer sur leur demande. 

"Cette adhesion sera notifi^e par la 
voie diplomatique au Gouvernement de 
la Confederation suisse, et par celui-ci a 
tons les autres. 

" File emportera, de plein droit, acces- 
sion ^ toutes les clauses et admission §l 
tous les advantages stipules par la pre- 
sente Convention, et produira ses effets 
un mois apres 1' envoi de la notification 
faite par le Gouvernement Suisse aux 
autres Etats union istes, a moins qu'une 
date posterieure n'ait 6te indiqule par 
I'Etat adherent." 

Le present Acte additionnel aura meme 
valeur et duree que la Convention du 20 
mars 1883. 

II sera ratifi^, et les ratifications en 
seront echang^es k Bruxelles, dans la 
forme adoptee pour cette Convention, 
aussitot que faire se purra, et au plus 
tard dans le delai d'une annee. 

II entrera en vigueur troia mois aprds 
cet echange. 

En foi de quoi les soussign^s ont sign^ 
le present Acte additionnel. 
Fait a Bruxelles, le , . 

Les Gouvernementa respectifs sent in- 
vites k signer le projet ci-dessus dans un 
delai de six mois; la signature et 1' echange 
des ratifications auront lieu de la maniere 
consignee dans ledit Acte additionnel. 

Fait en un seul exemplaire, 4 Bruxelles, 
le quatorze decembre 1897. 

Pour la Belgique: A. Nyssens, L. Ca- 
pelle, Georges De Ro, J. Dubois. 

Pour le Bresil: F. Vieira Monteiro. 

Pour le Danemark: H. Holten Nielsen. 

Pour I'Espagne: El Marq' De Berte- 
mati, Eduardo Toda. 

Pour les Etats-Unis d'Am^rique: Bel- 
lamy Storer, Francis Forbes. 

Pour la France: Montholon, C. Nicolas, 
Michel Pelletier. 

Pour la Grande-Bretagne: Charles B. 
Stuart Wortley, H. G. Bergne, C. N. Dal- 
ton. 

Pour I'ltalie: R. Cantagalli, C. F. 
Gabba, S. Ottolenghi. 



* And go into forcey etc, {et produira ses effets, tfec). 



PROTOCOLS ADOPTED AT BRUSSELS CONFERENCE, 189^ 



185 



For Norway: Chr. Hansson. 

For The Netherlands: Snyder Van 
Vv'yssenkerke. 

For Portugal: F. Quintella De Sampayo, 
Jayme De Sequier. 

For Servia: Spassoye Radoitchitch. 

For Sweden: Hugo E.-G. Hamilton. 

For Switzerland: Alphonse Rivier, L. 
R. De Salis. 

For Tunis: Montholon, Etienne Blade. 



Pour la Norvege: Chr. Hansson. 

Pour les Pays-Bas: Snyder Van Wys- 
senkerke. 

Pour le Portugal: F. Quintella de Sam- 
payo, Jayme de Seguier. 

Pour la Serbie: Spassoye Radoitchitch. 

Pour la Suede: Hugo E.-G. Hamilton. 

Pour la Suisse: Alphonse Rivier, L. R. 
de Salis. 

Pour la Tunisie: Montholon, Etienne 
Blad6. 



Section 2. 



SECOND FINAL PEOTOCOL TO AGREEMENT CONCLUDED AT MADRID APRIL 14, 
1891, CONCERNING THE INTERNATIONAL REGISTRATION OF TRADEMARKS. 



International Union for the Pt^otection qflU' 
dvstrial Property, 



Union Internationale pour la Protection de 
la Propriiti Industrielle. 



SECOND PINAL PROTOCOL. 



DEUXIEME PEOTOCOLE FINAL. 



The undersigned, representing States 
which have adhered to the Madrid agree- 
ment of April, 1891, concerning the in- 
ternational registration of trade-marks, 
assembled in conference at Brussels, De- 
cember 1, 1897, submit to their respective 
Governments the following project : 

Additional act to the agreement of April lU, 1891, 
concerning the international registration of trade- 
marks, concluded between {enumeration of con- 
tracting States) . 

The undersigned, duly authorized by 
their respective Governments, have by 
common consent and under reserve of 
ratification agreed as follows: 



Les soussign^s, representants des Etatg 
ayant adheres k 1' Arrangement de Ma- 
drid du 14 avril 1891 concernant I'enreg- 
istrement international des marques de 
fabrique ou de commerce, reunis en Con- 
ference a Bruxelles le 1^' d^cembre 1897, 
soumettent k leurs Gouvernements respec- 
tifs le projet dont la teneur suit : 

Acte additionnel a V Arrangement du 11^ avril 1891 
concernant V enregistrement international des mar- 
QUfis de fabrique ov, de commerce conclu entre 
{Enumeration des Mats contractants.) 

Les soussignes, dtiment autoris^s par 
leurs Gouvernements respectifs, ont, d'un 
commun accord, et sous reserve de ratifi- 
cation, arr6t6 ce qui suit: 



FIKST ARTICLE. 



ARTICLE PREMIER. 



Article 2 of the agreement shall be as 
follows : 

''Art. 2. Are assimilated to the sub- 
jects or citizens of the contracting States, 
the subjects or citizens of States which 
have not adhered to the present agree- 
ment, who upon the territory of the restricted 
union constituted by the lattery fulfill the 
conditions of article 3 of the general con- 
vention." 

Article 3 shall be as follows: 

"Art. 3. The International Bureau 
shall immediately register the marks 
deposited in accordance with article first. 
It shall give notice of this registration to 
the contracting States. The registered 
marks shall be published in a supplement 
to the Journal of the International Bureau 
by means of a cut furnished by the depos- 
itor. 



L' article 2 de P Arrangement aura la 
teneur suivante: 

''Art. 2. Sont assimiles aux sujets ou 
citoyens des Etats contractants les sujets 
ou citoyens des Etats n' ayant pas adhere 
au present Arrangement qui, sur le terri- 
toire de 1' Union restreinte constitute par 
ce dernier, satisfont aux conditions sta- 
biles par Particle 3 de la Convention 
gSnerale." 

L' article 3 aura la teneur suivante: 
"Art. 3. Le Bureau international en- 
registrera immSdiatement les marques de- 
posees conformSment k 1' article l*^ 11 
notifiera cet enregistrement aux ]fctats 
contractants. Les marques enregistrees 
seront publiees dan un supplement au 
journal du Bureau international au moyen 
d'un cliche fourni par le dSposant. 



* Note. — Amendments and additions, both in words and sentences, are in italics. 



186 EEVISION OF STATUTES KELATING TO PATENTS, ETC. 



^^ If (he depositor claim the color as a dis- 
tinctive element of his murk he shall he required: 

*' 1. To declare it, and to accompany his 
deposit by a description which shall make 
mention of the color. 

"2. To join to his application copies in 
color of the said mark, which shall be annexed 
to the notices given by the international bureau. 
The number of these copies shall be fixed by 
the rules of procedure. 

"In view of the publicity to be given 
to the registered marks in the different 
States, each Government shall receive 
gratuitously from the international bureau 
such number of copies of said publication 
as it shall see fit to demand." 

There is inserted in the agreement an 
article 4 bis as follows: 

"Art. 4 bis. Whenever a mark already 
deposited in one or more of the contract- 
ing States has been subsequently regis- 
tered by the international bureau in the 
name of the same owner or of his assignee 
the international registration shall be con- 
sidered as substituted in place of the prior 
national registrations without prejudice to 
the rights already acquired thereby." 

Article 5 shall be as follows: 

"Art, 5. In the countries where their 
legislation so authorizes, the Governments 
to which the international bureau shall 
give notice of the registration of a mark 
shall have power to declare that protec- 
tion can not be given to such mark within 
their territory. Such ob j action shall not be 
made except under the conditions which, 
by virtue of the convention of 20th March, 
1883, apply to a mark already deposited 
with the national registration. 

"They shall exercise this right within 
the period provided by their national law, 
and at the latest within a year from the 
notice provided by Art. 3, indicating at 
the same time to the international bureau 
their reasons for refusal. 

"The notice of the said declaration 
thus given to the international bureau 
shall be transmitted by it without delay 
to the Government of the country of origin 
and to the owner of the mark. The inter- 
ested party shall have the same means of 
redress as if the mark had been deposited 
directly by him in the country where the 
protection is refused." 

There is inserted in the agreement an 
article 5 bis as follows : 

"Art. 5 bis. The International Bureau 
shall deliver to anyone who shall demand it, 
under payment of a fee fixed by the rules of 
procedure, a copy of the entries on the register 
relating to any deposited mark.'* 



" Si le deposant revendique la coulenr 
a titre d' element distinctif de sa marque, 
il sera tenu: 

"1. De le declarer, et d'accompagner 
son depot d'une description qui fera men- 
tion de la couleur; 

"2. De joindre d, sa demande des ex- 
emplaires de ladite marque en couleur, 
qui seront annexes aux notifications faites 
par le Bureau international. Le nombre 
de ces exemplaires sera fix6 par la Kegle- 
ment d' execution. 

",En vue de la publicity t donner, dans 
lesEtats, aux marques enregistr^es, chaque 
Administration recevra gratuitement du 
Bureau international le nombre d' exem- 
plaires de la susdite publication qu'il lui 
plaira de demander." 

II est insert dans T Arrangement un 
article 4 bis ainsi congu: 

"Art. 4 bis. Lorsqu'une marque, d^jd, 
d^pos6e dans un ou plusieurs Etats con- 
tractants, a ^te posterieurement enregis- 
tr^e par le Bureau international au nom 
du meme titulaire ou de son ayant cause, 
renregistrement international sera con- 
sidere comme substitu^ aux enregistre- 
ments nationaux ant^rieurs, sans preju- 
dice des droits acquis par le fait de ces 
derniers." 

L' article 5 aura la teneur suivante : 
"Art. 5. Dans les pays oti leur legisla- 
tion les y autorise, les Administrations aux- 
quelles le Bureau international notifiera 
I'enregistrement d'une marque auront la 
faculte de declarer que la protection ne 
pent etre accordee k cette marque sur 
leur territoire. Un tel refus ne pourra 
^tre oppos^ que dans les conditions qui 
s'appUqueraient, en vertu de la Con- 
vention du 20 mars 1883, ^ une marque 
d^pos^e ^ renregistrement national. 

' ' Elles devront exercer cette faculty dans 
le delai pr^vu par leur loi nationale, et, au 
plus tard, dans I'annee de la notification 
pre vue par 1' article 3, en indiquant au 
Bureau iatemational leurs motifs de refus. 

"Ladite declaration ainsi notifi^e au 
Bureau international sera par lui trans- 
mise sans delai k 1' Administration du pays 
d'origine et au proprietaire de la marque. 
L'int4ress4 aura les memes moyens de 
recours que si la marque avait ete par lui 
directement deposee dans le pays ou la 
protection est refusee." 

II est ins4r6 dans 1' Arrangement un 

article 5 bis ainsi congu : 

"Art. 5 BIS. Le Bureau international 
d^livrera k toute personne qui en fera la 
demande, moyennant une taxe fix^e par 
le Reglement, une copie des mentions 
inscrites dans le Registre relativement a 
une marque d^termin^e." 



PROTOCOLS ADOPTED AT BRUSSELS CONFERENCE, 1897. 



187 



Article 8 shall be as follows: 
"Art. 8. The government of the coun- 
try of origin shall fix at its discretion and 
receive for its own profit a fee which it 
shall collect from the owner of the mark 
for which international registration is 
demanded. 

"To such fee shall be added an inter- 
national fee of 100 irancs for the first mark 
and 60 francs for each of all other marks 
deposited at the same time by the same owner. 
The annual proceeds of these fees shall, 
under the supervision of the international 
bureau, be distributed equally between 
the contracting States, after deduction of 
the common expenses necessary to the 
execution of this agreement." 

There is inserted an article, 9 bis, as 
follows: 

"AnT. 9 BIS. When a mark entered in 
the international register shall be assigned 
to a person established in a contracting 
State other than the country of origin of 
the mark, notice of the assignment shall 
be given to the international bureau by 
the government of said country of origin. 
The international bureau shall register the 
assignment, and after having received the 
assent of the government to which the 
new owner belongs shall give notice to 
the other governments and publish it in 
its journal. 

" The present provision does not have 
the effect of modifying the laws of the 
contracting States, which prohibit the as- 
signment of the mark without the simul- 
taneous conveyance of the industrial or 
commercial establishment whose products 
it distinguishes. 

"No assignment of a mark inscribed 
in the international register, made on 
account of a person not established in 
one of the contracting States, shall be 
registered." 

Article II. 

The closing protocol, signed at the same 
time as the agreement of April 14, is 
-- suppressed. 

The present additional act shall have 
the same force and duration as the agree- 
ment to which it relates. 

It shall be ratified and the ratifications 
thereof shall be exchanged at Brussels in 
the form adopted by this agreement as 
soon as may be, and at the latest within 
the period of one year. 

It shall go into effect three months 
after such exchange. 

In witness whereof the undersigned 
have signed the present additional act. 

Done at Brussels, the — of , . 

The respective governments are invited 
to sign the above project within six 



L' article 8 aura la teneur suivante: 
"Art. 8. L' Administration du pays 
d'origine fixera a son gr6, et percevra ^ 
son profit, une taxe qu'elle r^clamera du 
proprietaire de la marque dont I'enregis- 
trement international est demand^. A 
cette taxe s'ajoutera un Emolument inter- 
national de 100 francs pour la premiere 
marque, et de 50 francs pour chacune des 
marques suivantes, d^pos^es en m^me 
temps par le meme proprietaire. Le pro- 
duit annuel de cette taxe sera r^parti par 
parts ^gales les Etats contractants par les 
soins du Bureau international, apres 
deduction des frais communs n^cessit^s 
par F execution de cet Arrangement." 

II est ins^r^ un article 9 bis congu comme 
suit: 

"Art. 9 BIS. Lorsqu' une marque inscrite 
dans le registre international sera trans- 
mise a une personne ^tablie dans un Etat 
contractant autre que le pays d'origine 
de la marque, la transmission sera notifiee 
au Bureau international par 1' Adminis- 
tration de ce m^me pays d'origine. Le 
Bureau international enregistrera la trans- 
mission et, apres avoir regu I'assentiment 
de 1' Administration a laquelle ressortit le 
nouveau titulaire, il la notifiera aux autres 
Administration et la publiera dans son 
journal. 

' ' La presente disposition n'a point pour 
eff et de modifier les legislations des Etats 
contractants qui prohibent la transmission 
de la marque sans la cession simultan^e 
de I'etablissement industriel ou commer- 
cial dont elle distingue les produits. 

" Nulle transmission de marque inscrite 
dans le registre international, faite au 
profit d'une personne non etablie dans 
I'un des pays signataires, ne sera enreg- 
istr^e." 



Article 2. 

Le Protocole de cloture sign^ en m^me 
temps que 1' Arrangement du 14 avril 
1891 est supprime. 

Le present Acte addition el aura meme 
valeur et dur^e que 1' Arrangement au- 
quel il se rapporte. 

II sera ratifie, et les ratifications en 
seront echang^es si Bruxelles, dans la 
forme adopts pour cet Arrangement, aus- 
sitot que faire se pourra, et au plus tard 
dans le d^lai d'une annee. 

II entrera en vigueur trois mois apr^s 
cet ^change. 

En f oi de quoi les soussign^s ont sign6 
le present Acte additionnel. 

Fait d, Bruxelles, le , . 

Les Gouvernements respectifs sont in- 
vites ^ signer le pro jet ci-dessus dans un 



188 REVISiOK OF STATUTES RELATIKG TO PATEKTS, ETC. 



months; the signature and the exchange 
of ratifications shall take place in the 
Eoanner designated in said additional act. 



delai de six mois ; la signature et 1' ^change 
des ratifications auront lieu de la maniere 
consignee dans I'Acte additionnel. 



RULES OF PROCEDUEE. 

Modifications submitted to the approval 
of the contracting governments. 

Insert in the regulations an article 6 
bis, as follows: 

"Art. 6, bis. The fee provided by arti- 
cle 5 of the agreement for the copies or 
extracts from the register is fixed at 2 
francs for each extract." 

Modify article 7 as follows: 

"Art. 7. The changes taking place in 
the ownership of a mark, and which shall 
have been the object of the notice pro- 
vided by articles 9 and 9 bis of the agree- 
ment, shall be entered in the register of 
the international bureau. The latter shall 
give notice in its turn to the contracting 
governments and shall publish them in 
its journal, taking into account the special 
provisions of article 9 bis when the new 
owner is not established in the country of 
origin of the mark." 

Modify the first paragraph of article 11 
as follows: 

"Art. 11. The present rules shall re- 
main in force as long as the agreement to 
which they relate." 

Done in one single copy at Brussels, 
December 14, 1897. 

For Belgium: A. Nyssens, L. Capelle, 
Georges De Ro, J. Dubois. 

i For Brazil: F. Vieira Monteiro. 

For Spain: El Marqs. De Bertemati, 
Eduardo Toda. 

For France: Montholon, C. Nicholas, 
Michel Pelletier. 

For Italy: R. Cantagalli, C. F. Gabba, 
S. Ottolenghi. 

For The Netherlands : Snyder Van Wis- 
senkerke. 

For Portugal: F. Quintella De Sampayo, 
Jayme De Seguier. 

For Switzerland: Alphonse Rivier, L. R. 
De Salis. 

For Tunis: Montholon, Etienne Blade. 



EEGLEMENT D' EXECUTION. 

Modifications soumises k T approbation 
des Administrations contractantes. 

Insurer dans le Reglement un article 6 
bis ainsi congu. 

"Art. 6, bis. La taxe pr^vue par Parti- 
cle 5 bis de T Arrangement pour les copies 
ou extraits du registre est fixee ^ 2 francs 
par extrait." 

Modifier Particle 7 en lui donnant la 
teneur suivante: 

"Art. 7. Les changements survenus 
dans la propriete d'une marque, et qui 
auront fait V objet de la notification pr^vue 
par les article 9 et 9 bis de 1' Arrangement, 
seront consignes dans le registre du Bu- 
reau international. Ce dernier les noti- 
fiera a son tour aux Administrations con- 
tractantes et les publiera dans son journal, 
en tenant compte des dispositions sp^ciales 
de Particle 9 bis, quand le nouveau pro- 
pri^taire ne sera pas etabli dans le pays 
d'origine de la marque." 

Modifier le premier alin^ de Particle 
11 de la maniere suivante: 

' 'Art. 11. Le present Reglement restera 
en vigueur aussi longtemps que P Arrange- 
ment auquel il se rapporte. ' ' 

Fait en un seul exemplaire, a Bruxelles, 
le quatorze d^cembre, 1897. 

Pour la Belgique: A. Nyssens, L. Ca- 
pelle, Georges de Ro, J. Dubois. 

Pour le Br^sil: F. Vieira Monteiro. 

Pour PEspagne: El marqs de Berte- 
mati, Eduardo Toda. 

Pour la France: Montholon, C. Nicho- 
las, Michel Pelletier. 

Pour PItahe: R. Cantagalli, C. F. Gab- 
ba, S. Ottolenghi. 

Pour les Pays-Bas: Snyder Van Wis- 
senkerke. 

Pour le Portugal: F. Quintella de Sam- 
payo, Jayme de Seguier. 

Pour la Suisse: Alphonse Rivier, L. R. 
de Salis. 

Pour la Tunisie: Montholon, Etienne 
Blad6. 



Chapter IV. 

PROPOSITION FOR THE AMENDMENT OF THE CONVENTION CON- 
CLUDED AT PARIS, MARCH 20, 1883, PRESENTED BY THE UNITED 
STATES TO THE BRUSSELS CONFERENCE OF 1897. 



Article 2 of the Convention, as it now stands, gives the right to the 
subjects or citizens of each of the contracting States to secure the same 
protection, so far as concerns patents for inventions, trade or commer- 
cial marks, and commercial names, in all the other States of the union 
that the respective laws thereof now, or may hereafter, accord the sub- 
jects or citizens, not only as regards the extent or duration of protection, 
but also as regards the fees for the issuance of the patent and for con- 
tinuing the protection given by the j)atent in force during the period 
named therein, and also as regards the inventions which may be protected 
by patent. 

In the United States the fees for the grant of a patent for an inven- 
tion are but $35, of which $15 is required upon filing the application 
and $20 prior to the issuance of the patent. The patent is granted for 
seventeen years, except in certain cases, and it continues in force for 
the full term for which it is granted without the payment of further fees. 

In certain of the States of the union not only are fees required 
upon deposit of the application and issuance of the patent, but further 
fees in the form of annual taxes are required for the continuance of 
the protection given by the patent as issued, the patent lapsing if these 
taxes are not paid. The aggregate amount of these fees in some of 
the States of the union is many times the fees required by the United 
States. For instance, in Great Britain, as stated in the "Tableau 
comparatif, published in a recent number of La Propriete Indus- 
trieUe, the fee payable on filing the complete specification is £4: ster- 
ling (say $20). This pays for the continuance in force of the patent 
for four years. For the fifth year a tax of £6 (say $25) is required; 
for the sixth year a tax of £6 (say $30), and so on, increasing £1 each 
year. The aggregate amount of the fees for a patent of fourteen 
years is thus £99, or nearly $500. 

In France annual taxes of 100 francs (say $25) are required, aggre- 
gating for a fifteen-year patent 1,500 francs (say $300). 

In Austria, under the law of January 11, 1897, the fee payable on 
the filing of the application is 10 florins (say $4) and the annual taxes 
for a fifteen-year patent aggregate over 1,900 florins (say $800). 

It does not seem just that a subject or citizen of a foreign State 
should secure from the United States protection for his invention, trade 
or commercial mark for a less sum than is required of citizens of the 
United States for like protection by the State of which he is a subject 
or citizen, and it is believed that the convention should not restrict the 
United States from requiring, if it shall seem best to do so, that sub- 
jects or citizens of other States should pay for the grant and continuance 
of protection the same fees which are required for like protection by 
other States from citizens of the United States. 

189 



190 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Further, it does not seem just that a greater protection to inventions 
than that which is extended by the State of which the inventor is a 
subject or citizen, or in which he is domiciled at the time of making 
his invention, should be extended by the United States. That, for 
instance, a subject or citizen of Austria (not yet, it is true, one of the 
contracting States) should be entitled to protection in the United 
States for the product of a chemical process, while in his own State he 
is entitled only to protection for a particular process for its manufac- 
ture and is not entitled to protection for the product, does not seem 
just, particularly as a citizen of the United States who has invented a 
product of a chemical process, for which he is entitled to protection in 
the United States, is not entitled to such protection in Austria as is 
now afforded the Austrian inventor in the United States. 

So, too, with reference to Switzerland. The Swiss patent laws do 
not recognize as entitled to protection either a chemical process or the 
product of such process unless it is susceptible of being represented 
by a model, while the citizen of Switzerland is entitled to protection 
in the United States for chemical processes and products of chemical 
processes, as well as many other inventions which can not be repre- 
sented by models. 

Any State of the Union should be entitled to refuse, at its option, 
to subjects or citizens of another State the protection which is refused 
by that other State to its subjects or citizens. 

For these reasons the United States Government proposes to amend 
article 2 by adding the following paragraphs: 

Provided, That a subject or citizen of any one of the contracting States applying for 
a patent for invention, trade or commercial mark, or commercial name in another of 
the contracting States may, at the option of the latter State, be required to pay for 
the issuance and continuance in force of the patent applied for fees equal in amount 
to the fees required of a subject or citizen of the State in which the patent is applied 
for, for the issuance and continuance in force of a patent for invention, trade or com- 
mercial mark, or commercial name, in the State of which the applicant is a subject 
or citizen. 

Provided further, That an invention not the subject of a patent in the country of 
origin may, at the option of another State of the Union, be refused protection in that 
State. 

Country of origin shall be considered the country of which the inventor is a subject 
or citizen, or in which he is domiciled at the time of the first deposit of an application 
for an invention. 

Article 4 of the convention is not suited to the wants of American 
inventors. 

The amendment of section 4887 of the Revised Statutes of the United 
States approved March 3, 1897, which will take effect January 1, 1898, 
will eliminate from our law the feature of the dependence of the tTnited 
States patent on prior patents for the same invention previously taken 
in foreign countries. This amendment, while removing one reason for 
the proposition of the United States at Madrid that the period of delay 
should begin at the date of the issue of the United States patent, 
namely, that the grant of a prior foreign patent would limit the latter 
to the term of the former, does not obviate another difficulty which 
springs from our system of preliminary examination. 

In our system the papers deposited with the application for a patent, 
and forming part thereof, are: (1) An application therefor in writing 
to the Commissioner of Patents; (2) ''a written description of the inven- 
tion or discovery, and of the manner and process of making, construct- 
ing, compounding, and using it, in such full, clear, concise, and exact 



PROPOSITIONS OF U. S. , BRUSSELS CONFERENCE, 1897. 191 

terms as to enable any person skilled in the art or science to which it 
appertains, or with which it is most nearly connected, to make, con- 
struct, compound, and use the same; and in case of a machine, an 
explanation of the principle thereof, and the best mode in which he 
(the inventor) has contemplated applying that principle so as to dis- 
tinguish it from other inventions, and in which he (the inventor) shall 
particularly point out and distinctly claim the part, improvement, or 
combination which he claims as his invention or discovery" (Revised 
Statutes, section 4888); (3) drawings "when the nature of the case 
admits of drawings." (Revised Statutes, section 4889.) 

Specifications and drawings are submitted to the examination of 
skilled persons in the Patent Office, called examiners, who often find 
that the inventor has improperly described or misapprehended his 
invention and has claimed more than he had a right to claim as new. 
If it is found that the invention has been known or used by others in 
the United States, or has been patented or described in any printed 
publication in any country before his invention, the application is 
refused and no patent thereon issued. If, however, the claims of the 
application are merely broader than the invention and imclude therein 
matter which is shown by the prior state of the art to be old, then the 
applicant may amend his specification and claims so as to limit them 
to his actual invention, and this being done the patent is issued upon 
the amended specification and claims. Such amendments are always 
restrictive in their nature, and the applicant is never permitted to 
broaden his claim to cover an invention not within the description 
contained in the application as filed. It is found from the records of 
the Patent Office that of the applications for patents filed since the 
year 1880 nearly one-third were rejected for want of patentable nov- 
elty, the remaining two-thirds were found patentable, and in all but 
those in which the final fee was not paid within the time required by 
law patents were issued. 

By amendment of the specification and claims forming a part of the 
application the inventor is enabled to separate the new from the old 
and to claim what he has in fact invented. It is this amended appli- 
cation which should be the subject of refiling in the different States of 
the Union under article 4. But as in certain cases the examination 
may not be completed for a considerable period of time, and the invent- 
or may be desirous of immediately exploiting his invention in otJier 
countries of the Union or of avoiding the risk of intermediate publica- 
tion or other acts which would vitiate his patent, he should be allowed 
to deposit his application in the several States of the Union with a 
description of his invention as filed in the country employing the pre- 
liminary examination, and afterwards to amend the same so as to make 
it conform to the patent issued on the first application. 

In the case of an application filed in another country and afterwards 
in a. country employing the preliminary examination under claim of 
priority, then the specification and claims there allowed should be 
taken as equivalent to the prior application for the purposes of article 4. 

The United States Government therefore proposes to amend article 4 
by adding the following paragraph: 

The application for a patent of invention of an industrial model or design, or a 
trade-mark above mentioned, may be amended in the part describing or claiming 
the invention, model, or design, in conformity with the description and claim allowed 
and forming part of the patent issued in countries requiring a preliminary examina- 
tion; but the description and claim shall not be construed to extend in any State of 
the Union greater protection to the invention than in the country of origin. 



Chapter V. 

REPORT OF THE UNITED STATES DELEGATES TO THE BRUSSELS 
CONFERENCE OF 1897. 



Brussels, December 15^ 1897. 

Sir: We, the delegates from the United States to the Brussels Con- 
ference under the Convention for the Protection of Industrial Prop- 
erty, concluded at Paris March 20, 1883, respectfully report that we 
have attended and participated in all the meetings of the Conference 
which began on December 1 and adjourned December 14 to meet again 
after certain diplomatic correspondence shall have been concluded. 

The conference was more largely attended than either of its prede- 
cessors held at Rome and Madrid. It was especially remarkable for 
the active part taken in its proceedings by States not yet adhering to 
the Union, viz, Austria-Hungary, Germany, Chile, Ecuador, Japan, 
Mexico, and Turkey. 

Of the unionist States Belgium was represented by four delegates 
and a secretary, Brazil by one delegate, Denmark by one, France by 
three. Great Britain by three delegates, a technical adviser, and a sec- 
retary, Italy by three delegates, the Netherlands by one, Norway by 
one, Portugal by two, Servia by one, Spain by two, Sweden by one, 
Switzerland by two, Tunis by two (one of whom was the French min- 
ister to Belgium, who also appeared for France), making with ourselves 
thirty-one delegates. 

Each country had but one vote, but the advantage of a number of 
delegates in committee and other work, often going on simultaneously, 
was apparent. 

The nonunionist States were represented as follows: Austria-Hun- 
gary by two delegates, Germany by three, Chile by one, Ecuador by 
two, Japan by three, Mexico by one, Turkey by two. 

The International Bureau was represented by M. Henri Morel, the 
director. 

1. PROPOSITION OF THE UNITED STATES TO AMEND ARTICLE 2 IN 
THE INTEREST OF RECIPROCITY AND SOLUTIONS PROPOSED BY 
OTHER MEMBERS OF THE CONFERENCE. 

We learned at the very opening of the Conference that most, if not 
all, of the other States of the Union had been instructed to oppose the 
proposition of the United States to add a paragraph to article 2 allow- 
ing reciprocity as to fees, and also as to the subject-matter of patents. 
We therefore asked that the proposition be sent to the committee on 
patents, where there seemed to be a better opportunity of proper con- 
sideration than m the open sessions of the Conference. We found 
unanimous opposition to the proposition in the committee, which could 
not be removed by argument. The statement of *' motives" given in 
192 



REPORT U. S. DELEGATES TO BRUSSELS CONFERENCE, 1897. 193 

support of the additional paragraph — which show the lack of reciproc- 
ity in the matter of patent grants between the United States and the 
other nations of the Union — did not carry weight with the other dele- 
gates, because, as they said, there were other solutions of the diffi- 
culties pointed out in the "motives" which were not inconsistent with 
their understanding of the principle laid down in article 2, viz, that 
citizens of any State of the Union shall enjoy in every other State the 
same rights as citizens of the latter. 

The solutions referred to were the requirements from both citizens 
and aliens in case of an application abroad for a patent for an invention 
prior to an application for a patent therefor in the United States. 

{a) Of the pajmient of the same fees in the United States as required 
in the country (or one of the countries to be designated) where previ- 
ously applied for. 

{b) Of a limitation of the patent granted in the United States in such 
case to the same subject-matter as protected by patent in the country 
(or one of the countries to be designated) where previously applied for — 
e. g. , if the laws of said countr}^ allow the grant of a patent for a process 
only and not for the product of the process — that then no patent shall 
be granted in the United States for the product, but only for the process. 

(<?) Of a condition in the patent granted in the United States in such 
case that it shall become null in case the invention is not worked in the 
United States or licenses are not granted thereunder as required by 
the laws of the country (or one of the countries to be designated) where 
previously applied for. 

It was pointed out that it is not likely that our citizens will first 
apply for patents abroad, whereas it is most probable that those who 
reside in those States which enforce the laws against our citizens to 
which we object will first apply in such countries and come under the 
limitations imposed in the interests of reciprocity. 

Such provisions are not new in our law. An example is found in the 
patent act approved March 3, 1897, which amended section 4887 of the 
Revised Statutes so as to limit the grant of patents to both citizens and 
aliens for inventions for which applications had been previously made 
in other countries. This statute was not objected to in the Conference 
because of any claim that it is not in full accord with article 3 of the 
Convention. 

The committee, after the discussion which brought out the sugges- 
tions for the solution of our objection to the Convention because not 
reciprocal toward us, reported that — 

The committee finds that the proposition of the Government of the United States 
is inspired by ideas which are in formal opposition to the terms of article 2 and the 
general spirit of the Convention. Under these circumstances it has rejected the 
proposition with the unanimity of its members, except the United States. 

We immediately replied, in substance, that the United States has 
always maintained the principle that its national legislation should be 
as liberal as possible in its provisions concerning patents for inventions; 
but that a number of countries have, on the contrary, maintained, or 
introduced into their laws since the Convention of 1883, serious restric- 
tions to the detriment of American citizens, which the Convention does 
not sufficiently minimize; that its results are reciprocally unequal, and 
sometimes wholly unjust to the individual members of the Union. 

We further said that the United States has sought a means of 
remedying this inequality by a modification of the Convention itself, 



194 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

and that if the Conference, by adopting the views of the committee, 
should not accept the proposition of the United States, it would prob- 
ably be obliged to introduce restrictions into its legislation in order to 
preserve, as far as possible, its interests which are now sacrificed. 
No criticism was attempted upon the stand taken by us. 

2. PROPOSITION OF THE UNITED STATES TO AMEND ARTICLE 4 SO AS 
TO REMOVE ANY QUESTION AS TO THE EFFECT OF AMENDMENT OF 
APPLICATION. 

The United States supplemented the propositions of the International 
Bureau of Berne to amend and add to article 4 by a proposition to add 
an explanatory clause in regard to amendments made in the applica- 
tion for a patent in the United States, because of the requirements of 
the Patent Office. 

All the proposed amendments of article 4 were examined with care 
and the evident intent to give the inventor a free period of time before 
the applications succeeding the first application for a patent during 
which he might do those things — such as a publication of a description 
of the invention, its working, or its introduction, which (if happening 
before the application) would render a patent in most of the European 
countries of the Union invalid. 

The question has been asked by our people: "What is the effect of 
the words 'by a third party' {jpar un tiers) in article 4, and also what 
is the effect of the amendment of the application in our Patent Office 
on an application made under the Convention?" 

The committee on patents of the Conference recommended that the 
words ''par un tiers" be suppressed, which recommendation was 
adopted by the Conference. 

The committee further reported, as follows: 

The subcommittee, after having established by the explanation of the "motives'* 
that the proposition of the United States applies only to the exercise of the right of 
priority, is of the opinion that the proposition is unnecessary, since it is incontestable 
that the restrictions given to the original description during the preliminary exami- 
nation can not prejudice the right of priority as established by article 4. 

The further statements made on the minutes of the Conference seem 
to settle any doubt as to the construction to be given to article 4. It 
seems clear, therefore, that with the suppression of the words "par un 
tiers," if agreed to by the contracting States and the interpretation 
given to the article by the Conference, an American inventor can apply 
for a patent for his invention in the United States and within the period 
of seven months thereafter can make a similar application in any of the 
other States of the Union and obtain a valid patent, notwithstanding 
the absence of absolute novelty as to the public before and at the time 
of the application. In other words, that an applicant in the United 
States for a patent for an invention not theretofore described or made 
known so as to be unpatentable in other countries of the Union may 
go into such country and offer his invention for sale like any other 
commodity during a period of seven months. 

The proposition of the International Bureau to amend article 4 so 
that each State of the Union should fix for the application for a patent 
first deposited with it a date of commencement of the period of delay 
of priority at a point between the date of the filing of the application 
and the issue of the patent was withdrawn before article 4 was con- 
sidered. 



REPORT U. S. DELEGATES TO BRUSSELS CONFERENCE, 1897. 195 
3. PROPOSITIONS OF OTHER STATES. 

It is to be regretted that so few of the States of the Union complied 
with the resolution, adopted on the motion of the delegates from the 
United States at the Madrid Conference, that propositions for the 
amendment of the Convention should be presented in advance of the 
Conference. On account of such neglect some of the delegates were 
without instructions on important questions which were raised, and 
instead of the work being finished at the conference important parts 
were postponed for diplomatic correspondence. Excuses were made 
that the Conference was called in advance of the time originally set 
(May 1, 1898), at the earnest request of Spain, which desired an inter- 
pretation of the Madrid agreement of April 14, 1891, relating to false 
indications of origin. This interpretation, it was stated, would have 
some bearing upon a litigation then in progress in France over wine, 
alleged to bear a false indication of origin while in transit through 
France to England and Belgium. 

The International Bureau presented in advance of the Conference a 
very exhaustive series of propositions covering the whole ground of 
the convention as well as of the agreements of Madrid. These propo- 
sitions were made after long observation of the workings of the Con 
vention by the officials of the International Bureau, and also in view of 
the discussion which the Convention had provoked in many countries, 
and at a congress concerning the protection of industrial property 
held at Vienna in October, 1897. A copy of such propositions is sent 
herewith. 

The Netherlands proposed to add to article 4 the words "regularly 
made," so that the period of priority for designs, industrial models, 
and trade-marks should only run from a deposit regularly made. It 
further proposed to exclude from trade-marks entitled to registration 
"proper or commercial names which the depositor is not entitled to 
use," meaning the names of strangers adopted without authority. 
(Art. 6, par. 4.) 

It further objected to the amendment of article 10 proposed by the 
International Bureau as too broad. 

Belgimn also objected to the new article 4 his proposed by the Inter- 
national Bureau and offered a substitute. 

The propositions of the International Bureau, of the Netherlands, of 
Belgium, and of our Government were the only ones relating to the 
Convention of 1883 submitted prior to the Conference. 

Spain proposed amendments to both of the agreements of Madrid 
and the Netherlands to the agreement for the international registration 
of marks. 

Propositions of the French delegation were presented on December 
1. They relate to persons assimilated to citizens of contracting States 
(articles), and also to " unfair competition in trade" — a subject not 
provided for in the Convention. The proposition of the British dele- 
gation to limit the trade-marks entitled to registration under the Con- 
vention (article 6) was also presented on the same day. 

Immediately after the opening of the Conference the Netherlands 
modified their proposition in regard to article 10 of the Convention, 
and Germany, Italy, and Sweden severally proposed modifications of 
article 4 his^ proposed by the International Bureau. Later Belgium, 
Hungary, and Servia made propositions. We transmit copies of the 



196 REVISION OF STATUTES EELATIITG TO PATENTS, ETC. 

various propositions herewith. It will be observed that the proposi- 
tions of the International Bureau as originally printed were modified 
in the "Tableau General des Propositions." 

After considering the various propositions the Conference adopted a 
first final protocol relating to the Convention of 1883, and those States 
which had adhered to the Madrid agreement of 1891 in relation to 
international registration of trade-marks adopted what is called a 
second final protocol in relation thereto. 

4. FIRST FINAL PROTOCOL ADOPTED BY THE CONFERENCE. 

The amendments to the Convention adopted, and which now go to 
the various States of the Union for ratification, are annexed hereto as 
Appendix A. 

The amendments and reasons therefor may be briefly stated as follows: 

Article 3. — ^The amendment to article 3 provides that citizens of a 
country not forming a part of the Union may be entitled to the advan- 
tages of the Convention to the same extent as the citizens of any coun- 
try which is a member of the Union, if they are either domiciled in 
the latter country or maintain "effective and serious" industrial or 
commercial establishments therein. This amendment was intended to 
prevent the advantages of the Convention going to citizens of nonad- 
hering countries who might maintain very small or trivial establish- 
ments as a pretense for obtaining such advantages. 

Article If,. — The amendment to article 4 by striking out the words 
"by a third party" {jpar un tiers) removes a possible difficulty in the 
application of the article which might arise from an interpretation that 
the permitted disclosure, working, or importation could only be made 
by a third party, thus excluding the inventor himself from the right to 
publish, exploit, or introduce his invention, which right is the very 
thing desired by the United States, as before stated. 

Article i Ms. — A new article, entitled article 4 his^ provides for the 
mutual independence of patents applied for in the different States of 
the Union by persons entitled to the rights granted by the convention. 

We supported this proposed new article, as instructed by you. 

In order to avoid any confusion in regard to the interpretation here- 
after to be given to the second paragraph, which reads: "This provi- 
sion shall apply to all patents existing at the time of its entering into 
force," we called attention to it in the regular meeting and found that 
it was the unanimous sense of the Conference that the paragraph was 
not applicable to existing United States patents, but only to those 
patents whose terms might be shortened by the laws of those States 
of the Union in which provision is made for a shortening of the term 
on the lapsing of patents for the same inventions in other States. 

An existing United States patent can not be affected by what may 
take place in regard to a patent for the same invention abroad. The 
limitation of the terms of the United States patents imposed by section 
4887 was a determination at the moment of the grant of the patent of 
its term, and therefore the duration of the patent is unaffected by the 
subsequent expiration of a foreign patent for the same invention by 
reason of nonpayment of taxes or nonworking. 

While there exist no patents in the United States which can be 
affected by article 4 his^ it may still affect advantageously the foreign 
patents of American citizens, and is, therefore, a provision in the 
interest of our people. 



REPORT U. S. DELEGATES TO BRUSSELS CONFERENCE, 1897. 197 

Article 9, — ^The amendment to article 9 is merely a permission to 
those States which do not practice seizure to subsitute in place thereof 
the exclusion of the offending goods. 

Article 10. — The amendment to article 10 is the introduction of the 
"producer" and of his "products" to the protection of the Conven- 
tion. This is intended to cover agricultural products and is of great 
interest to the American people as large exporters of such products. 
The amendment further extends the number of "interested parties" 
entitled to take proceedings for the suppression of infringements from 
those dwelling in a locality to all those dwelling in the region in which 
the locality is situated. 

Article 11. — ^The amendment to article 11 is to make the protection 
accorded to exhibits at international exhibitions more efficient, but it 
would seem that the addition of the words "according to the legisla- 
tion of each country" takes away much of the force of the article. 

Article H- — The amendment to article 14 strikes out the words 
"the next meeting shall take place in 1885 at Rome." A conference 
was actually held in Rome in 1886. The amendment seems to be a 
matter of taste merely. 

Article 16. — ^The amendment to article 16 fixes with greater cer- 
tainty the date of adhesion of a new State to the Convention and allows 
such State a choice of such date. 

Becommendation. — These amendments can in no instance, in our 
opinion, prejudice the citizens of the United States, and should be 
adopted. 

5. SECOND FINAL PROTOCOL ADOPTED BY MEMBERS OF THE UNION 
ADHERING TO THE MADRID AGREEMENT CONCERNING THE INTER- 
NATIONAL REGISTRATION OF TRADE-MARKS. 

The United States has not adhered to the Madrid agreement of April, 
1891, in relation to the international registration of marks, but as your 
instructions required us to take part in the perfecting of this agreement, 
we gave the same attention. 

The amendments to this agreement which were adopted by the States 
adhering thereto are annexed as Appendix B. 

The amendments and reasons therefor may be briefly stated as 
follows: 

Article ^. — ^The amendment to article 2 provides for a limitation of 
the advantages of the agreement to those persons who, on the territory 
of the restricted union created by the agreement, shall fulfill the con- 
ditions of article 3 of the general convention.^ 

Article 3. — The amendment to article 3 provides for the publication 
of registered marks by means of a stereotype furnished by the regis- 
trant. This replaces the description of the mark previously allowed. 
The amendment further provides for a ckim to the color of the mark 
and means for determining the same. 

Article ^ his. — ^This new article provides f^Dr the substitution of 
international for State registration without prejudice to the rights 
acquired by the latter. 

It is apparently the intention to make the International Bureau at 
Berne the center of a cheap registration which shall be efficient over 
the territory of all the adhering States. The desirability of such 

* Amended article 3 of the Convention is referred to at page 182, ante. 



198 KEVISION OF STATUTES EELATII^G TO PATENTS, ETC. 

registration is apparent on reference to the German trade-mark law 
now in force, which provides that the first applicant for the registra- 
tion of a mark used by him in Germany i«s entitled to registration, 
although the very same mark may have been previously and publicly 
used by someone else for many years. 

Article 6. — The amendment to article 6 limits the right of an adher- 
ing State to declare that protection will not be accorded to a trade- 
mark, except on the conditions applicable to a mark for which national 
registration is applied for under the Convention of March 20, 1883. 

The only condition contained in the Convention is that registration 
may be refused if the object for which it is demanded is considered as 
contrary to good morals or to public order. (Article 6, Convention.) 

This amendment is a step forward both in the way of liberty of adop- 
tion of marks and of uniformity in their protection. 

Article 6 his. — This is a new article providing for the furnishing of 
copies of the entries made in the register relative to any mark. 

Article 8. — The amendment to article 8 provides that the fee of the 
International Bureau, in addition to that of the State of origin of the 
mark, shall be 100 francs for the first mark and 60 francs for every 
additional mark deposited at the same time by the same proprietor. 

The great cost of registration by private enterprise in the various 
commercial countries of the world is set forth in the "motives" accom- 
panying the propositions of the International Bureau and is also a mat- 
ter of common knowledge. 

Article 9 lis. — ^This is a new article, as follows: 

When a mark entered in the international register shall be assigned to a person 
established in a contracting State other than the country of the origin of the mark, 
notice of the assignment shall be given to the International Bureau by the Govern- 
ment of said country of origin. The International Bureau shall register the assign- 
ment,' and after having received the assent of the Government to which the new 
owner belongs shall give notice to the other Governments and publish it in its jour- 
nal. The present provision does not have the effect of modifying the laws of the 
contracting States which prohibit the assignment of the mark without the simultane- 
ous conveyance of the industrial or commercial establishment whose products it 
distinguishes. 

No assignment of a mark inscribed in the international register made on account 
of a person not established in one of the contracting countries shall be registered. 

We annex a copy of the agreement for the international registration 
of marks, together with a translation, for the better understanding of 
the amendments, Appendix D. 

We are of the opinion that registration under this agreement would 
be of advantage to the citizens of the United States both as respects econ- 
omy of registration and security in the enjoyment of their marks, and 
we recommend that steps be taken to secure to them such advantages. 

6. PROPOSITIONS LEFT TO DIPLOMATIC CORRESPONDENCE. 

The propositions in regard to which the Conference arrived at no 
conclusions, and which provoked the most discussion and took up the 
greater part of its time, were left to diplomatic correspondence, to be 
undertaken by the Belgian Government. 

These propositions relate, respectively: 

To the duration of the period of delay of priority (patents, art. 4); 

To the forfeiture of patents for nonworking (art. 6); 

To the admission of trade-marks to registration (art. 6); 

To the usurpation of marks used but not registered (art. 7 his.^ new); 

To unfair competition (concurrence deloyale, art. 10 his^ new). 



REPOKT U. S. DELEGATES TO BEUSSELS CONFERElSrCE, 1897. 199 

A. DURATION OF PERIOD OF PRIORITY. 

The propositions of the International Bureau that the period of delay 
of priority granted by article 4 be extended from six months for 
European States and seven months for the United States to a uniform 
period of twelve months was in reality pressed by the German dele- 
gates, who stated that their Government could not adhere to the Con- 
vention unless such extension was granted, for the reason that it took 
about nine months to complete the examination of a patent in the 
German patent office, wherefore a delay of six months would be with- 
out advantage to their citizens. They further stated that it was just 
that an applicant should have the benefit of the examination made by the 
Government and its opinion thereon before being required to determine 
what other applications he should make. 

It was pointed out by the French delegates in opposition that the 
period during which the inventor was not compelled to make his appli- 
cation subjected the manufacturer who wished to undertake the exploita- 
tion of a new invention to a long delay prior to the determination of 
the question whether the invention could be used or not; and further, 
in some cases where he was ignorant of a prior application and entered 
upon the manufacture, to unjust loss. The present article contains 
conditions so onerous upon their people that they would not consent 
to their extension. 

Our remark on this statement was that in practice, as illustrated in 
the United States, a new invention had to be brought to the attention 
of the public by the inventor before it was taken up by the manufac- 
turer, and that the latter was therefore put upon his guard as to the 
use of the invention. The period of delay of priority was in fact a 
period of time allowed to the inventor in which to take advantage of 
the laws provided for his protection, and might be regarded, from the 
point of view of the manufacturer to whose attention the inventor had 
caused his invention to be brought, as though it had been kept secret. 

We also remarked that the only other case that there could be was 
that of a separate invention by the manufacturer, which raises a dif- 
ferent question, viz, that of the rights of independent inventors. 

We voted for the proposition to extend the period of priority to 
twelve months, explaining, however, the limitation in our own law of 
seven months after application abroad in which application may be 
made in the United States, a period not of priority as understood 
under the convention, but of limitation only. 

The countries voting for the extension were Belgium, Brazil, Spain, 
the United States, Italy, Norway, the Netherlands, Sweden, and Switz- 
erland. Those voting against were France, Portugal, Servia, and Tunis. 
Denmark abstained from voting, the Danish delegate having stated 
that the extension would require a change in their law, which now 
fixed the period of priority at seven months. 

We believe that the extension of the period of priority to twelve 
months would give our inventors many advantages, some of which are 
stated in the ' ' motives " for the second proposition of the United States, 
and that such extension would not conflict with the intent of the Con- 
gress in passing the patent act of March 3, 1897, since that act per- 
mits of the public user of inventions in the United States for two 
years before application for a patent, and further because it was 
stated by the committee on patents prior to the passage of that law 

S. Doc. 20 14* 



200 BEVISION OF STATUTES RELATING TO PATENTS, ETC. 

that the period of seven months was taken in order to conform to the 
convention of 1883. 
We recommend the adoption of this proposition. 

B. FORFEITURE OF PATENTS FOR NONWORKINQ. 

It was proposed to extend the period after the grant of a patent dur- 
ing which it could not be forfeited for nonworking to three years. 

This proposition, like the last referred to, was offered by the Inter- 
national Bureau and pressed by the German delegates, who made it 
also a condition of adhesion to the Convention. 

It has been claimed by our citizens that the working of patents taken 
out by them abroad is a great burden, as it often happens that either 
the invention is slow in its advance in public favor, or that one estab- 
lishment can better supply the public demand through better facilities 
of manufacture or otherwise than a number. 

On the other hand, the argument is urged by the countries which 
require working that it is unfair to the people to grant what may 
become obstructive patents to the advantage of strangers and without 
any corresponding compensation. 

During the session of the Conference a society of patent agents of 
Brussels passed resolutions which state so clearly the position taken by 
some of the delegates in the Conference that we translate them: 

Considering that, as a patent is a privilege granted by society on the condition that 
it profit from the discovery, as well from the point of view of the inventive spirit of 
the people which it stimulates as the material advantages which it procures, that that 
condition should be realized during the life of the patent and not alone at its expi- 
ration, the moment when the invention has often lost its value; 

Considering that the laws of the various countries have almost unanimously required 
the obligation to work (exploiter) ; 

Considering that, as working (exploitation) includes manufacture as well as use, use 
in this country alone of the product manufactured abroad is not sufficient; 

Considering that, as the principle is universally recognized that national industry 
can not be tributary to foreign industry, the introduction in default of the obligation 
to work would be a cause of considerable harm to commerce and industry; 

Considering that an account should be taken of the economic conditions of coun- 
tries and of the marked inferiority in such conditions, which is found in some of them ; 

Considering that, as the provisions of the international Convention are drawn not 
only for the profit of the inventor but also in the general interests, its effect can not 
be to modify the legal system that each country has believed that it ought to adopt 
for the defense of the interests of its people; that this principle has been notably 
embodied in section 2 of article 5 of the Convention; 

Considering that the obligation to work is not so onerous when the patentee has 
the faculty of representation in each country or to grant licenses; but, further, that 
in certain cases the actual conditions may be mollified by taking the offer of the 
invention under equitable conditions to industry and commerce as constructive 
working; 

Considering, especially from the point of view of Belgium, that it is useful to recall 
what was said by Mr. Jobard, author of the project of law in regard to the obligation 
to work in the Kingdom in the course of the year which follows the beginning of the 
introduction abroad: 

"We have considered the matter from a point of view which responds especially 
tc the fear that an inventor will draw from abroad only those objects for which he 
has obtained a patent." 

Resolved, unanimouly, That the International Conference (a) should maintain the 
obligation prescribed by the various laws to work inventions, with this modification, 
that the patentees may excuse their inaction for cause, especially by offers which 
they may have made on conditions equitable to commerce and industry; (h) should 
decide that the introduction by the patentee of the thing patented into the country 
where the patent has beeu granted can only be allowed as an exception. 



REPORT U. S. DELEGATES TO BRUSSELS CONFERENCE, 1897. 201 

The principle of compulsory working is embodied in the oldest of 
patent laws, that of France, and is also found in some of the most 
recent, such as Russia, Austria, Hungary, and Switzerland. Compul- 
sory license was introduced by England into the patent act of 1883. 
The German law of 1891 combines the features of both. For conven- 
ience of reference we have added an appendix (J) containing some of 
the laws in regard to compulsory working and compulsory license. 

Obstructive patents which are used to prevent the manufacture or 
use of a patented article or the use of a patented process or machine 
in the country granting the patent were recognized in the Conference 
as an evil. An example was given of owners of an English patent for 
a dye who would not make use of or sell the dye in England, because 
they wanted to sell in England cloth dyed abroad with the dye also 
made abroad. Proceedings, it was said, had been taken under the 
compulsory-license section of the English patent law to compel a 
license under the patent to the English weavers who desired to use 
the dye. 

The particular proposition brought before the Conference by the 
International Bureau near its close and voted upon was as follows: 

Nevertheless the patent can not be declared lapsed because of nonworking in the 
country until after a minimum period of three years, and in the case where the 
patentee does not justify his inaction. 

Shall be considered as justification of inaction the fact that the patentee has offered 
licenses on equitable terms by means of publications recognized as sufficient and that 
these offers have been fruitless. 

The subconmaittee did not adopt the proposition, but offered as a 
substitute: 

The patentee shall remain subject to the obligation to work his patent conformably 
to the laws of the countries where he introduces the patented article. The patent 

can never lapse because of nonworking until after a delay at the least of years 

and in the case when the patentee does not justify the cause of his inaction. 

The substitute was not adopted by the Conference, which passed a 
vote on the first clause of the proposition of the international bureau 
as to the length of the delay. This was put to vote twice; first a 
period of two years was voted unanimously, and then a period of three 
years by all the States except France, Portugal, Servia, and Tunis, 
which voted in the negative. 

The remainder of the first paragraph, *'and in the case where the 
patentee does not justify his inaction," was sustained by all those who 
voted, including ourselves, but Belgium, Denmark, and Sweden 
abstained from voting. 

The question of giving an example of such justification as in the 
second paragraph was negatived. 

It is apparent that the abolition of working altogether would be an 
act of reciprocity toward the United States, which now grants unre- 
stricted patents to citizens of countries which impose such a condition. 

The exemption for a period of three years, or even two years, as 
unanimously voted, may be accepted as a step toward such reciprocity. 

a THE ADMISSION OP TRADE-MARKS TO REGISTRATION. 

The question. What should be a trade-mark entitled to registration 
under the Convention? was discussed at great length in committee. 



202 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

The proposition of Great Britain presented at the opening of the 
Confeience was as follows: 

Article 6 to be maintained in its present form, with addition of the following 
provisions: 

This ground of refusal is applicable to marks containing — 

(a) Public arms and decorations. 

(&) A word or words referring to the nature or quality of the goods, or a geo- 
graphical word or words, unless the depositor state in his application that he lays no 
claim to any exclusive right to the use of these words or names. 

(c) The name or names of a person or company unless such name be printed or 
woven in a distinctive shape, or consist of the written signature in original or fac- 
simile of the person or company which makes the deposit. 

Paragraph 4 of the final protocol to be suppressed. (Original English text.) 

The statement of reasons accompanying the proposition is annexed 
as Appendix F. In substance, the statement alleges that article 6 and 
the interpreting protocol — 

appear to authorize the foreign depositor to claim protection for a mark for which 
registration would not be accorded to a national, because the local law does not allow 
of such a mark being considered as entitled to registration. 

An instance may be quoted which will prove to the Conference the danger of allow- 
ing the registration of marks without any restriction. If, for instance, some one suc- 
ceeded in getting the words ''pig iron" registered as a trade-mark in one of the con- 
tracting States, would all the States of the Union be bound to grant protection for 
these words, even England and the United States, where no other terms exist for 
designating the substance? 

It would be contrary to the interests of all Unionists to grant to an individual the 
exclusive right of using terms bearing on the nature or quality of goods, geographical 
names, or names of individuals or societies. Such words or names should always 
remain public property; no one can wish a monopoly in them to be granted to a 
private person. 

The proposition was referred to a subcommittee, which reported the 
different opinions of its members by name and that an amendment to 
replace paragraph 1 of article 6 had been offered by the Chevalier 
Beck de Mannagetta, delegate from Austria, viz: 

No trade-mark regularly deposited in the country of origin can be refused registra- 
tion in the other countries of the Union except for the reasons which shall be equally 
applicable to marks of nationals. 

That this amendment was accepted by the delegates of Great Britain 
and the Netherlands. 

The report further said that the amendment implies the abrogation 
of paragraph 4 of article 6, as well as the entire provision No. 4 of the 
final protocol. 

The report gave rise to a long discussion, of which the most salient 
feature was the distinction between old marks adopted to conform to 
no special prescribed form and those which may now be adopted under 
rules and regulations provided by some of the members of the Union. 

As to marks long in use and clearly indicative of origin, there does 
not seem to be the same reason to apply strict rules as to new marks 
adopted to designate some new object of trade or manufacture or some 
new merchant or artisan. 

Further, there was a clear separation in the debate between those 
countries which make the registration of the mark attributive of 
property, like Germany, and those where the registration is merely 
declaratory of a right, like France. In the one case the administra- 
tive officer passes once for all upon the validity of the mark in view of 
a certain standard set up by the law, and in the other case the regis- 



REPORT U. S. DELEGATES TO BRUSSELS CONFEREl^CE, 1897. 203 

tration is merely formal and the courts pass upon the validity of the 
mark in case of dispute. 

Article 6 was again sent to the committee, and the British delegates 
submitted a revised text of their original proposition, as follows: 

The English delegation proposes to maintain in its integrity article 6 of the con- 
vention, as well as No. 4 of the final protocol, with the addition of the following 
provision: 

" It shall be permissible to each of the contracting States to refuse deposit in the 
following cases: 

"1, Marks consisting exclusively of the name or names either of a person or of a 
company, unless these names be presented for deposit in a distinctive shape, or con- 
sisting of the signature in original or in facsimile either of the person or of the com- 
pany which makes the deposit. 

"2. Marks consisting either of a designation necessary for the indication of the 
nature or quality of products or of geographical names, unless the depositor in his 
application make a declaration to the effect that he lays no claim to any exclusive 
right to the use of these designations or names by themselves and without prejudice 
to the protection to which indications of origin are entitled. 

"Denominations which do not indicate origin, as well as invented names in the two 
preceding cases (1 and 2) , shall continue to be protected. 

"3. Marks which include public arms or decorations without sanction from the 
proper authorities." 

The committee reported nonagreement upon a form of amendment 
and a general discussion again arose, in which the British delegates 
said that it seemed indispensable to state in the Convention that regis- 
tration which would give an exclusive right of use of such marks as 
contain geographical names could not be allowed, and the French dele- 
gates again affirmed that the spirit of the Convention required that 
marks be registered such as they are {l^elle quelle). The question as to 
what should be severally done with the two classes of marks, new and 
old, seemed to be wholly unobserved, although such a distinction is 
specially made in the English law, and the contest was waged on a 
right given by registration which might not thereafter be removed. 

At a later session of the Conference the committee reported that 
they had again considered the revision of article 6, and that the British 
delegation had again offered its proposition in the form above. 

The general discussion which followed showed a great diversity of 
opinion as to the proper interpretation of article 6 in connection with 
No. 4 of the final protocol. It seemed to the German and Austria- 
Hungarian delegates that under the article as it is when read in con- 
nection with final protocol No. 4 they would have a right to refuse 
registration to marks which did not conform to their law, e. g., descrip- 
tive marks, those which had fallen into the public domain, and objects 
which could not be considered as marks. This was disputed by the 
French delegates, and the question of what constitutes a trade-mark 
was again gone over, the whole discussion being tinged, as before, with 
the color of the attributive or the declarative position taken by each 
State, or by the views of those who favored the decision of the valid- 
ity of trade-marks by administrative officers rather than by the courts 
after discussion by opposing counsel. 

The provisional vote on the British proposition was as follows: In 
favor, Brazil, Denmark, Spain, Great Britain, Norway, The Nether- 
lands, Servia, Sweden, Switzerland; against, the United States, France, 
Portugal, and Tunis. Belgium abstained. 

We are of opinion that ttie proposed amendment of Great Britain 
goes too far. There are many old marks in use in the United States 



204 REVISION OF STATUTES EELATING TO PATENTS, ETC. 

which may have been adopted without sufficient consideration, but 
which by their age have now lost their descriptive character and taken 
on a secondary meaning. These are not in the same category as new 
marks, and ought not to be subject to an arbitrary standard which did 
not exist when they were adopted. By the Convention as it is all such 
marks are protected — at least ought to be. 

D. — THE USURPATION OF MARKS USED BUT NOT REGISTERED. 

This question is very intimately associated with that of registration, 
which we have just discussed. The countries whose laws make the 
registration attributive of right will not recognize marks which are 
used only, but are not registered, whereas those countries which make 
the registration declarative only do regard the age and extent of use 
of the mark in question. 

In Germany the registration is attributive and carries with it certain 
property rights, the first applicant who fulfills the condition of the law 
being given the sole right to use the trade-mark, no matter how short 
his use, thus cutting off the rights acquired by any other person by a 
use for no matter how many years. Further, we should say that this 
does not rest in theory, but has become a matter of practice, although 
the law only entered into effect October 1, 1894. In anticipation of the 
effect of the law in giving the mark to the first applicant in case of 
rival dealers it is said that more than 8,000 applications were filed on 
one day at the entering into effect of the law. 

The laws of France may be cited as an example of declaratory legis- 
lation. The registration in France is merely a declaration of claim 
which must be made before suit is brought, but the decision as to the 
validity of the mark is left to the courts. Our own legislation is in 
effect the same. 

The International Bureau proposed the following new article to 
remedy the evident evil effect produced by trade-mark laws attributive 
of property, viz: 

Article 7 Us. A mark known in commerce as designating the goods produced or 
sold by a person fulfilling the conditions of article 2 or 3 of the convention, or an 
imitation of that mark, can neither be validly registered for the benefit of another, 
nor fall into the public domain in the other contracting States, even if no steps have 
been taken for the registration of the same. 

The Belgian delegation proposed as an amendment that article 7 bis 
should read as follows: 

Article 7 bis. A trade-mark can not fall into the public domain, nor be validl}' 
registered by another in one of the States of the Union as long as it shall be the 
subject of a first right in the country of origin. 

The subcommittee on marks, to whom the propositions were referred, 
discussed also a third proposition drafted by the French delegates, viz: 

A mark regularly registered in the country of origin and not registered in the 
other countries of the Union can not be legally appropriated by a third party in 
these countries if this appropriation has been made in bad faith. In case of appro- 
priation made in good faith, if the originator of the mark proves his priority, he can 
mtroduce his products into the country of the second user without giving the latter 
the right to brmg an action. 

The original proposition of the International Bureau being brought 
up for consideration at the afternoon session of December 11, the com- 
mittee to whom it had been referred reported that the delegates from 



EEPOET U. S. DELEGATES TO BRUSSELS COKFERENCE, 1897. 206 

A astria-Hungary , and the United States, France, Italy, the Nether- 
lands, and Sweden had united in proposing to the Conference the text 
agreed to at Madrid, viz: 

A trade-mark can not fall into the public domain in one of the States of the Union 
as long as it shall be the subject of an exclusive right in the country of origin. 
Also that France and the International Bureau had withdrawn their propositions. 

In the discussion which followed, both the Swedish and Servian dele- 
gates stated that the proposed amendment was in opposition to the 
laws of their respective countries, which make registration attributive 
of property. 

The proposition being put to vote, all the States whose laws made 
the registration declarative of property only, voted in the affirmative, 
viz, Belgium, France, Italy, the Netherlands, Portugal, Switzerland, 
Tunis, and the United States. There was one vote in the negative — 
Servia — and five abstaining, viz, Brazil, Denmark, Great Britain, 
Norway, Sweden, and Spain. 

It is clearly in the interest of those countries like the United States, 
whose laws make the registration of marks declaratory of right only, 
that some such amendment to the Convention should be adopted as a 
safeguard against the loss of marks by registration by others in coun- 
tries whose trade-mark laws are attributive of property and give the 
mark to the first comer. 

E. — UNPAm COMPETITION IN TRADE. 

The Conference has reserved for diplomatic correspondence substan- 
tially the whole subject of trade-mark protection. It has left to that 
correspondence the admission of trade-marks to registration, the usur- 
pation of old marks not registered, and unfair competition in trade. 
We have seen the difficulties growing out of the difierent systems of 
registration, and suggest that the introduction of this latter protection 
to trade into the Convention will mitigate much of the hardship which 
is likely to arise from the lawful adoption and registration by strangers 
in their own countrj^ of old marks in other countries. There may be 
unfair competition in trade which will be restrained by the courts 
without the element of the infringement of a valid trade-mark. The 
two rights may exist side by side, as in France, England, and the 
United States. 

The special proposition before the Conference offered by France is 
as follows: 

The beneficiaries of the Convention (articles 2 and 3) shall enjoy in all the States 
of the Union the protection against unfair competition accorded to nationals. 

We think that a provision in this tenor should be added to the con- 
vention. 

7. COLLECTIVE MARKS. 

The proposition of the International Bureau (TV) for the making of 
an additional agreement in relation to marks of collective origin 
between such members of the Union as chose to sign the same was 
abandoned because of the clearly expressed opinion among the mem- 
bers of the Conference that it would be disadvantageous to the well- 
being of the Union under the convention of 1883 to create any more 
subsidiary unions or allow any further subsidiary agreements. 



206 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

The desirability of the protection of marks indicating collections of 
individuals was universally conceded, and the suggestion was made 
that they should be brought under the convention itself. 

The subcommittee on marks, to which the proposition of the Inter- 
national Bureau was referred, reported that they had agreed to propose 
to insert in the Convention the following: 

Collective marks shall be protected in the same manner as individual marks on 
condition that legal protection shall have been acquired in the country of origin. 

In every instance this protection shall not be accorded except to the extent that 
the legislation of each contracting State permits. 

After a discussion which brought out the statement that such marks 
were not the subject of protection in some countries, the words "in 
the case " were added to the second paragraph, so that the same would 
read "Except in the case and to the extent." The proposition thus 
amended was put to vote, with the result of eight affirmative and four 
negative votes, and three abstaining. 

A proposition of the French delegates as follows: 

"The provisions of article 6 are applicable to collective marks," was 
then put to vote, with the result of eight votes in the affirmative and 
six in the negative, one abstaining. 

On the suggestion of the president the Conference passed the follow- 
ing resolution: 

The Conference expresses the desire that collective marks shall be protected in the 
same manner as individual marks in the countries of the Union. 

8. RESOLUTIONS ADOPTED BY THE CONFERENCE. 

In addition to the resolution adopted by the Conference that collect- 
ive marks should be protected, a desire was also expressed in regard 
to the completion of legislation for the protection of industrial prop- 
erty, as follows: 

That those of the States of the Union which do not possess laws upon all the 
branches of industrial property (patents for inventions, industrial designs or models, 
trade-marks, trade names, indications of origin) complete their legislation therein as 
soon as possible. 



In&astrial designs and models. — A resolution was also adopted (but 
by a vote of 9 to 2, some abstaining) as follows: 

The Conference expresses the desire that the legislation of each of the contracting 
States shall permit the depositors of industrial models or designs to obtain legal pro- 
tection therefor during ten years at the least. 

This resolution gave rise to some discussion as to the principle on 
which such right is based, whether it was not analogous to copyright, 
and a stranger to patent right. This was the only theoretical proposi- 
tion presented to a very practical Conference. 

A resolution to provide for the international registration of indus- 
trial designs and models, proposed by the International Bureau, was 
withdrawn on its being shown that in certain countries industrial 
designs and models are deposited in sealed envelopes. 

Patent drawings. — The Conference adopted the following: 

The Conference expresses the desire that an understanding between the States of 
the Union concerning the production of drawings to be annexed to applications for 
patents should be had, so that one sole and same drawing multiplied by technical 
process can be utilized for the applications for patents deposited in each of the 
States. 



REPORT U. S. DELEGATES TO BRUSSELS CONFERENCE, 1897. 207 

Proj)ositio')xs should he forwarded to Interrmtioncd Bureaic prior to con- 
ference. — In order to avoid the difficulties arising from delegates being 
without instructions, to which we have referred, we renewed the 
resolution which was introduced by our predecessors at Madrid, that 
the propositions of the members of the Union for the amendment of 
the Convention should be sent in in advance of the next Conference, 
and the same was adopted. 

9. RESOLUTIONS INTRODUCED BY FRANCE. 

The delegates from France presented the following resolution : 

That the Government of the United States of America attempt in every way to 
provide as soon as possible Federal legislation which will replace local legislation in 
reference to trade-marks, and will insure an easier and more efficient suppression of 
trade-mark infringements. 

This resolution was evidently introduced in ignorance of the position 
already taken by the United States in prior Conferences. In replying, 
we referred to the minutes of the Conference at Paris, 1880 (p. 150), 
which reports a statement by Mr. Putnam, delegate from the United 
States, as follows : 

The plenipotentiary of the United States of America having declared that by the 
terms of the Federal Constitution the right to legislate concerning trade-marks is, in 
a certain measure, reserved to each of the States of the American Union, it is appar- 
ent that the provisions of the convention will only be applicable within the limits 
of the constitutional powers of the high contracting parties. 

This statement was incorporated into the protocol of that Conference. 

We further said that the Federal law provides that owners of trade- 
marks used in commerce with foreign nations, provided such owners 
shall be domiciled in the United States or located in a foreign country 
which by treaty, convention, or law affords similar privileges to citi- 
zens of the United States, may obtain registration of such trade-marks. 

Also, that it is the opinion of some lawyers in the United States 
that, under the clause of the Constitution giving the Congress the 
power to regulate commerce between the States, there might be added 
by law to those trade-marks which are now registered under the exist- 
ing law the trade-marks used in commerce among the several States. 
But such a law relating, as it must, solely to marks not used in foreign 
commerce would not change the rights of aliens in the least. 

That as to legal proceedings for the suppression of infringement 
aliens have all the rights of citizens. 

Further, that so far as relates to the protection of marks from a 
point of view strictly interior, the Conference is not interested. 

No vote was taken upon the resolution, it being apparent that the 
United States had acted in good faith. There was also an evident 
feeling that the resolution went too far and was directed to the inte- 
rior policy of the United States, with which the Conference had no 
concern. 

10. REQUIREMENTS OF GERMANY BEFORE ADHESION TO THE CON- 
VENTION. 

The three German delegates, Mr. Hauss, Geheimer Ober-Regie- 
rungsrath. Counsel Reporter in the Department of the Interior of the 
Empire; the Count d'Arco- Valley, Counsel of Legation, First Secretary 
of the Imperial Embassy at London; Mr. Robolski, Geheimer Regie- 
rungsrath, Member of the Imperial Patent Office, made known the 



208 EEVISIOK OF STATUTES RELATING TO PATENTS, ETC. 

requirements of Germany for adhesion to the Convention to be an 
amendment extending the period of priority to twelve months, and an 
amendment extending the period after grant of the patent during 
which the same need not be worked to three years. They further 
made a demand for compulsory license, but did not insist thereon. 

The German delegates took a most active part in all the discussions 
and proceedings of the Conference. 

We annex the statements of the German delegates presented at the 
opening of the Conference, as Appendix G. 

11. ACCEPTANCE OF THE INVITATION OF THE UNITED STATES. 

In accordance with our instructions, we invited the Conference to 
determine the United States as the next place of meeting. We are 
glad to report that the invitation was accepted. 
We are, dear sir, very respectfully, 

Bellamy Stoker. 
Francis Forbes. 
Hon. John Sherman, 

Secretwry of State. 



Appendix A. — ^First final protocol, adopted at Brussels (convention). (See ante, 
p. 182.) 

Appendix B.— Second final protocol, adopted at Brussels (international registration 
of trade-marks) . (See ante, p. 185.) 

Appendix C. — Supplemental convention, concluded at Madrid, April 15, 1891. (See 
ante, p. 156.) 

Appendix D. — Agreement concerning the international registration of trade-marks, 
Madrid, April 14, 1891. (See ante, p. 160.) 

Appendix E. — Agreement concerning the suppression of false indications of origin of 
goods, Madrid, April 14, 1891. (See ante, p. 158.) 



Appendix F. 

proposition of the BRITISH DELEGATES. 

[Article 6. Final Protocol No. 4.] 

Article VI, to be maintained in its present form, with addition of the following 

provisions: 

"This ground of refusal is applicable to marks containing — 

" (a) Public arms and decorations. 

" (6) A word or words referring to the nature or qualitjr of the goods, or a geograph- 
ical word or words, unless the depositor state in his application that he lays no claim 
to any exclusive right to the use of these words or names. 

''(c) The name or names of a person or company, unless such name be printed or 
woven in a distinctive shape, or consist of the written signature in original or fac- 
simile of the person or company which makes the deposit." 

Paragraph 4 of the final protocol to be suppressed. 

STATEMENT OF REASONS. 

The application of Article VI and of No. 4 of the final protocol has given rise in 
England to rather serious difficulties. The Conference may be reminded that the 
true principle of the Union, established in article 2 of the Convention, consists in this, 



REPORT U. S. DELEGATES TO BRUSSELS CONFERENCE, 1897. 209 

tliat subjects of each of the contracting States are entitled to enjoy in the other States 
the same advantage as, and not superior advantages to, nationals. 

Article VI in its present form and the interpreting protocol appear to authorize the 
foreign depositor to claim protection for a mark for vi^hich registration would not 
be accorded to a national, because the local law does not allow of such a mark being 
considered as entitled to registration. 

The government of her Britannic Majesty hesitates to give their assent to a pro- 
vision in virtue of which a stranger might claim in England advantages superior to 
those enjoyed by nationals, and it seems difficult to them to make the stipulations of 
Article II tally with those of Article VI and of No. 4 of the final protocol. The 
British delegates beg the conference to give due weight to this difficulty. 

The Convention, taken as a whole, appears to aim at securing a right of priority for 
obtaining registration, rather than an absolute right to such registration, and at lay- 
ing down that the depositor ought to subm^it to local law in every country where he 
claims registration. 

An instance may be quoted which will prove to the Conference the danger of 
allowing the registration of marks without any restriction; if, for instance, some one 
succeeded in getting the words "pig iron " registered as a trade-mark in one of the 
contracting States, would all the States of the Union be bound to grant protection to 
these words, even England and the United States, where no other term exists for 
designating the substance ? 

It can, moreover, be affirmed that the principle of the British proposal should be 
admitted by all the States as resulting from iaternational law. 

It would be contrary to the true interests of all Unionists to grant to an individual 
the exclusive right of using terms bearing on the nature or quality of goods, geograph- 
ical names, or names of individuals or societies. Such words or names should always 
remain public property; no one can wish a monopoly in them to be granted to a 
private person. 

Difficulties have already arisen in regard to this matter in England, and the Gov- 
ernment of Her Britannic Majesty considers the moment to have come when the real 
bearing of the provisions on this point should be defined. 

Acting on this theory, the British delegates venture to submit to the favorable con- 
sideration of the Conference their proposal, which aims at inserting in the convention 
a series of exceptions to the principle which appears to be involved in the present 
text of Article VI and of No. 4 of the final protocol. This proposal keeps in view the 
amendments proposed by the International Bureau and by the administration of the 
Netherlands. Should it be accepted, No. 4 of the final protocol would cease to be of 
use and be suppressed. 



Appendix G. 
STATEMENT OF GERMAN DELEGATES. 

The Imperial Government has submitted the prehminary draft of the International 
Bureau, which has been transmitted to it in view of the coming conference of union- 
ist Governments for the protection of industrial property, to a detailed examination. 

German industry has always deeply approved the tendency of the Union to facili- 
tate as much as possible the obtaining and working of patents, of industrial designs 
or models, and of trade-marks in other countries than the country of origin ; and in 
removing by provisions stipulated in conventions the difficulties which result from 
the_ differences between national laws. The Imperial Government, on its part, has 
desired to give expression to the interest which it bears in the efforts of the Union by 
sending representatives to the conferences of Rome and Madrid. If the German 
Empire has not- joined the Union up to this time, such abstention on its part is 
explained by certain peculiarities in the articles of the Union — peculiarities which 
appear irreconcilable with the interior legislation of Germany. 

Besides some questions of less importance, the article concerning the manner of 
fixing the delay of priority (Article 4 of the Convention) and that on the retention of 
the p)rovision imposing the obligation of working (Article 5) have especially tended 
to raise a doubt in the Imperial Government as to the possibility of its adhesion to 
the Union. If a solution of these two questions, guarding the interests of German 
industry as much as that of foreign industry, can be found, the Imperial Government 
would be disposed to take into consideration the question of its adherence to the 
Union. It is with Uvely satisfaction that it has learned of the preliminary draft of 
the International Bureau, and has recognized an endeavor to resolve the difficulty 
worthy of attention. 



210 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

As to the details of the preliminary draft, the Imperial Government allows itself 
to make the following observations: 

1 . According to the propositions concerning Article 4, each of the States of the Union 
is to have the power to fix for itself, in applications for patents, the point of depar- 
ture of the delay of priority at any moment during the time comprised between the 
date of the receipt of the application and that of the delivery of the patent. This 
proposition is evidently suggested by the desire to recognize the conditions in those 
States which deliver a patent onlj/^ after a minute preliminary examination. But the 
restriction to which that proposition is subject would lead to serious difficulties from 
the German point of view, because it is not permitted in any case, no matter what 
may be the point of departure of the delay of priority, to move the efficacy of the 
right of priority back of the point of departure of the delay. Under these con- 
ditions Germany can not, as she has done in the special conventions signed with 
Austria, Hungary, Italy, and Switzerland, calculate the delay from the deliverance 
of the patent, since in that case the publication of the application before the deliver- 
ance of the patent would put in question the novelty of the invention in the other 
States of the union. 

Also, the Imperial Government can not admit the date of the publication of the 
application as the point of departure, since it is not always possible to prevent the 
secret of the application being divulged before the publication. The inventor him- 
self is frequently interested in making his invention known to the public, or in com- 
mencing its industrial exploitation. Besides, in both cases the right of priority of 
the German inventor would not be preserved, inasmuch as his application for a pat- 
ent would not have priority over applications made in other countries of the Union 
in the interval between the application and its publication in Germany, or the deliver- 
ance of the German patent. 

The propositions relating to Article 4 can not, therefore, furnish the Imperial Govern- 
ment an acceptable basis of further negotiations unless the effect of the priority were 
to be moved back of the date of the first application. We are far from overlooking 
that the States which fix the point of departure at a date after that of the first appli- 
cation would obtain thereby an actual prolongation of the delay of priority. If such 
a prolongation does not seem acceptable, it only remains to seek another basis of 
understanding, while maintaining the same point of departure for all the countries. 

In that case the Imperial Government can not lose sight of the circumstance that 
the preliminary examination to which patent applications are subjected in Germany 
requires considerable time, and that on an average more than six, and frequently 
more than seven, months are necessary, reckoning from the date of the application 
until the inventor has acquired any certainty as to the result. Even admitting that 
the duration of the delay of priority be augmented by one month and extended to a 
period of seven months, the industrial who should make his application in the first 
place in Germany would hardly draw any material advantage from his right under 
the duration actually fixed by the provisions of the convention of the union. 

It is only by prolonging the duration of priority to twelve months that the German 
industrial in general would draw a substantial, but always inferior, advantage to that 
which the priority furnishes to applicants from other countries where the industrial 
need not wait until a decision has been taken upon his application, but can from the 
beginning of the delay, if he so decide, present his invention in the other countries 
and make the necessary arrangements and preparations. Nevertheless, in any case 
we leave this to the Conference, hoping that it will take into particular consideration 
the question of the extension of the delay of priority to a duration of twelve months 
from the date of the first application. 

2. The Imperial Government considers that in requiring the working of the patent 
under pain of forfeiture obligations at the same time onerous and in part impossible 
to reaUze are imposed on the inventor who has demanded and obtained a patent in a 
certain number of States, and that without real profit to industry in general. To 
restrain the obligation of working is, then, in its eyes one of the ends to which the 
efforts for an international understanding should principally be directed. It is from 
this point of view that it appears to it desirable to establish an article by virtue of 
which the actual working in one of the contracting States shall remove in all the other 
contracting States any prejudice resulting from lack of working. The agreement pre- 
sented by the International Bureau in the preliminary draft recognizes^ only partly 
this way of looking at the question; nevertheless it appears adapted to improve the 
international situation of patents. If this agreement obtains the adhesion of a suffi- 
ciently large number of the States of the union, the Imperial Government considers 
that one of the principal reasons which has, up to this time, determined its absten- 
tion from the Union will be considerably modified. 

The difficulties raised by some of the other parts of the convention of the Union 
are of less importance and can be solved by reciprocal understanding. 



REPORT U. S. DELEGATES TO BRUSSELS CONFERENCE, 1897. 211 

GERMANY'S POSITION IN REFERENCE TO CONFERENCE OF 1880, WHICH DRAFTED THE 

CONVENTION OF 1883. 

The minutes of the Conference of Paris, 1880, state (p. 148) : 

"He (Mr. Kern) expressed the hope that the French Government, which has 
taken the initiative of the union, should continue to press foreign Governments in 
order to obtain new adhesions. That of Germany has not yet been obtained. 
****** ^ 

"Mr. Kern recalled what is said upon this subject (adhesion) in the response of 
the minister of foreign affairs of the German Empire to the note of M. de Freycinet, 
minister of foreign affairs of France, under date of December 16, 1879, and April 21, 
1880. The Prince Hohenlohe thus expressed himself in his dispatch of July 12, 1880: 

"The commission charged with the examination of the proposition of the French 
Government, entirely aware of the importance of that question to Germany, can not 
admit the necessity of the German Government participating in a conference of 
which the result will be without doubt to profoundly modify the legislation of very 
recent enactment which regulates this matter over the whole Empire. Therefore, 
the Imperial Chancellerie, believing itself called upon to decline the invitation of 
your excellence, has requested me to announce it, etc." 

Germany afterwards created a new patent law, April 7, 1891, and a new trade-mark 
law May 12, 1894. 



Appendix H. 
Inventions specially excluded from protection by patent. (See p. 306.) 



Appendix I. 

Laws of foreign countries in regard to compulsory working and license. (Sco 
p. 318.) 

Appendix J. 

PARAGRAPH 1 OF ARTICLE 6 OF THE CONVENTION, ITS ORIGIN AND 

HISTORY. 

The report of the conference of 1880 shows article 6 to have been adopted after 
the following proceedings: 

M. Jagerschmidt proposed a draft convention containing the following article (p. 
27): 

* 'Art. 7. Le depot d' une marque quelconque de f abrique ou de commerce sera admis, 
dans tous les Etats de T Union, aux risques et perils du d^posant, quelle que soit la 
nature du ^roduit revetu de la marque." 

(The registration of any trade-mark shall be allowed in all States of the Union at 
the risk and peril of the registrant, whatever be the nature of the product provided 
with the mark.) 

When this article was reached as stated in the minutes (p. 89) — 

" On the request of Mr. Demeur, Mr. Jagerschmidt stated the meaning of the article. 
He explained that in certain countries when a manufacturer or merchant appears to 
deposit a mark for pharmaceutical objects, for example, its registration is refused, 
because the product has not been approved by the council of hygiene and can not be 
put on sale. Now the mark is absolutely independent of the product, and it is of 
importance that its proprietor should be able to register it in order to guarantee his 
rights until the time when the product, forbidden to-day, shall be finally allowed." 

The conference then adjourned. On the next day the minutes say (p. 97) : 

" He (the president) read article 7, which is as follows: 

* ' Le caract^re des dessins ou modeles industriels et des marques de f abrique ou de 
commerce devra etre appreci^ dans tous les IStats de T Union d'apres la loi du pays 
d'origine" (p. 132). 

It appears from the minutes that on a formal demand by the Swiss delegate for 
the suppression of the words '■^dessiris et modeles^' and on objection raised by the 
same delegate to the expression "Ze caractere des marques,'* the Commission definitely 
adopted a new form presented by the Brazilian delegate, as follows: 

"Dans tous les Etats de 1' Union, le depot d'une marque quelconque de f abrique 
ou de commerce sera admis, aux risques et perils du deposant, quelle que soit la 
nature duproduitsurlequel la marque doit etre apposee." * * * 

(In all the States of the Union the registration of a trade-mark shall be allowed at 
the risk and peril of the registrant, whatever be the nature of the product upon 
which the mark is to be applied.) 

** The article is put to vote and adopted." 



212 EEVISION OF STATUTES EELATmO TO PATENTS, ETC. 

The draft convention having been gone over, article by article, a new text was 
prepared with newly numbered articles. 

Article 5 of the new draft contained four paragraphs, the first of which, corre- 
sponding in position to the first paragraph of the existing article 6, was as follows: 

"Toute marque de fabrique ou de commerce valablement deppsee dans le pays 
d'origine sera admise telle quelle au depot dans tous les autres Etats de T Union" 
(p. 138). 

(Every trade-mark validly registered in the country of origin shall be admitted, 
such as it is, to registration in all the other States of the Union.) 

The minutes say: 

"Mr. Jagerschmidt remarked that the text of the first paragraph is that which 
was adopted by the congress of 1878 (the congress at the Paris Exposition) . * * * 

* * The president observed that the expression validly (valablement) may be incon- 
venient. The deposit (registration) is simply a declaration, therefore it may be 
regular without being valid. It would be better to adopt the word regularly 
(regulierement) . * * * 

**The president said that before everything an understanding was necessary. 
Does the word valid (valable) mean that the property is definitely acquired by the 
depositor? * * * 

"Mr. Jagerschmidt sought to enlighten the discussion by reproducing an example 
cited before the committee of the conference. The question was first raised between 
France and Eussia. The Eussian law protects marks written in Eussian characters 
only; no French mark could be admitted to registration in that country. After an 
exchange of correspondence between the two Governments it was decided that the 
French mark regularly registered in France should be admitted, such as it is (telles 
quelles) , and protected in Eussia, although drawn up in French characters. 

"Thus, it is intended to express by article 5 that the mark shall be admitted to 
registration in the country of importation if it is regular in the country of origin; 
but an obligation on the tribunals to recognize and sustain the law of the country of 
origin as to validity does not result therefrom; they are only required to judge that 
the deposit has been regularly made. The article can, therefore, be adopted with 
the words regularly registered {deposee) , or even by simply saying registered {deposee) . 

' ' Mr. Demeur (Belgium) said that except in countries having a preliminary exami- 
nation the registration {depot) by itself does not prove the right of the registrant even 
in the country of origin. A judicial examination upon the validity of the mark, 
which examination should be judged according to the legislation of the country of 
origin, can therefore arise in the country where the mark shall be imported. He pre- 
ferred to return, with the exception of the omission of the words designs and models, 
to the original text of the first paragraph of article 5 adopted at its first reading. 

" The president stated the three propositions (p. 141) : 

"1. That of Mr. Demeur, which is the old text of article 5. 

"2. The text proposed by the Chevalier de Villeneuve, delegate from Brazil, and 
adopted by the committee. 

"3. The modification accepted by Mr. Indelli, i. e., the words regularly registered 
with the addition of the words admitted and protected." * * ^ 

"The text of the first paragraph of article 5 of the committee with the word 'regu- 
larly,' and the addition, and protected, is put to vote, and adopted by the majority." 
(P. 142) . 

The final text is as follows (p. 163) : 

"Toute marque de fabrique ou de commerce r^guherement deposee dans le pays 
d'origine sera admise au depot et protegee telle quelle dans tous les autres pays de 
r Union." 

This is translated in Ti'eaties and Conventions between the United States and other 
Powers, 1776 to 1887 (p. 1170) , as follows: 

"Every trade or commercial mark regularly deposited in the country of origin 
shall be admitted to deposit and so protected in all the other countries of the union." 

The translation published by Great Britain is as follows (see Kerley's Law of Trade- 
marks, p. 659) : 

' ' Every trade-mark duly registered in the country of origin shall be admitted for 
registration, and protected in the form originally registered in all the other countries 
of the union." 



Appendix K. — Propositions of the United States. (See ante, p. 189.) 



REPORT U. S. DELEGATES TO BRUSSELS CONFERENCE, 1897. 213 

ANALYSIS OF REPORT OF DELEGATES TO BRUSSELS CONFERENCE, 1897. 

1. Composition of the Conference. 

2. Propositions of the United States. 

A. Addition to article 2 to make the Convention niore reciprocal aa to taxes, 

fees, subject-matter, etc. Remedies by internal legislation pointed 
out. Adverse action of Conference. Protest of the United States. 

B. Addition to Article 4 in regard to amendments of applications for patents 

prior to grant. Declaration of Conference that such amendments 
have no effect on questions of priority. 

3. Propositions of other States. 

4. First protocol. Amendments to the Convention adopted by the Conference. 

Art. 3. Persons assimilated to subjects or citizens ; limited to those only who 

have effective and serious industrial establishments, etc. 
Art. 4. Striking out ^^par un tiers'^ in second paragraph. 
Art. 4 bis. A new Article providing for independence of patents taken out in 

different countries for the same invention. 
Art. 9. An additional paragraph permitting the substitution of a prohibition of 

importation in place of seizure and making seizure in transit 

optional. 
Art. 10. Adding to interested party "producer" and to "locality of product" 

faiiely indicated "the region where said locality is situated." 
Art. 11. International expositions shall be "granted" a temporary protection 

" in accordance with the legislation of each country." 
Art. 14. Omission of sentence * ' The next meeting shall take place in 1885 at 

Rome." 
Art. 16. Time of entering into force of an adhesion to the Union. 

5. Second protocol. Amendments to the Madrid agreement concerning the inter- 

national registration of trade-marks adopted by the States adhering 
to the said agreement. 

6. Propositions left to diplomatic correspondence. 

A. The delay of priority. (Art. 4.) 

B. The forfeiture of patents for non working. (Art. 5.) 

C. The admission of trade-marks to registration. (Art. 5.) 

D. The usurpation of marks used but not registered. (Art. 7 bis.) 

E. Unfair competition in trade. 

7. Collective marks. 

8. Resolutions adopted by the Conference. 

9. Resolution introduced by France that the United States should replace local trade- 

marks by Federal laws. 

10. Requirements of Germanjr before adhesion to the Convention. 

11 . Acceptance of the invitation of the United States. 

appe:n"dixes. 

A. First final protocol, Convention of Paris of 1883, proposed by Brussels confer- 

ence, (p. 182.) 

B. Second final protocol, agreement of Madrid, 1891, concerning international regis- 

tration of marks, proposed by Brussels conference, (p. 185.) 

C. Convention of Paris of 1888. (p. 146.) 

D. Agreement of Madrid of 1891 concerning the international registration of marks. 

(p. 160.) 

E. Agreement of Madrid of 1891 concerning the suppression of false indication of 

origin, (p. 158.) 

F. Propositions of the British delegates as to trade-marks. (Art. 6, protocol 4, p. 208.) 

G. Statement of German delegates, (p. 209.) 

H. Inventions especially excluded from protection by patents in other countries. 

(p. 306.) 
I. Laws of some other countries in regard to compulsory working and license, (p. 318. ) 
J. Article 6 of Convention, its origin and history, (p. 211.) 
K. Propositions of the United States, (p. 189.) 



Chapter VI. 

REPORT OF THE BRITISH DELEGATES TO THE BRUSSELS CONFER- 

ENCE OF 1897. 



The British Delegates to the Brussels Confere^ice of the Union for the 
Protection of Industrial Property to the Bight Hon. C. T, Bitchie, 
M, P 

Brussels, December 15^ 1897. 

Sir: We have the honor to report that, in accordance with our instruc- 
tions, we have attended the conference of the Union for the Protection 
of Industrial Property, which met in this city on the 1st instant and 
closed yesterday. 

Nearly all of the countries of the Union sent delegates, and among 
those States not parties to the Union which were represented may be 
mentioned German}^ which sent an able and well-equipped delegation, 
who took an active part in the proceedings; Austria-Hungary, which 
will shortly enter the Union, represented bv two well-informed Dele- 
gates, and Japan, which sent three Delegates to watch but not to take 
part in the proceedings. 

The object of the Conference was the discussion of a revision of the 
Convention of 1883 and of the additional Acts signed at Madrid on the 
14th April, 1891. 

It is not necessary for us now to recite at length the various pro- 
posals which had been put forward by the International Bureau of 
Berne and by the States, parties to the Union as the basis of the pro- 
ceedings, many of these having been dropped or modified in the course 
of the discussions. 

When the conference got to work it soon became apparent that the 
chief difficulties would be encountered in regard to the following 
points: 

{a) Article IV of the Convention of 1883, as to the delay of priority 
for patents and trade-marks. 

(5) Article V, respecting forfeiture of patents on account of non- 
working. 

((?) Article VI, relative to the obligation of the contracting States to 
register trade-marks ''Telle quelle," or in the form originally regis- 
tered in another State of the Union. 

{d) The Arrangement of Madrid of the 14th April, 1891, respecting 
false indications of origin. 

We propose, in the first place, to give a short explanation of what 
took place on each of these points. 

{a) DELAY OF PRIORITY FOR PATENTS. 

It will be remembered that the Paris Convention of 1883 provides 

for the international recognition of a period which commences from 

the deposit in one of the States of the Union of an effective application 

to such State for the grant of a patent, design, or trade -mark, and 

214 



REPORT BRITISH DELEGATES TO BRUSSELS CONFERENCE, 1897. 215 

within which such applicant can, by subsequently depositing a like 
application in another State of the Union, enjoy in such last-mentioned 
State the same rights as if his application thereto had been deposited 
at the same time as his application to the first-mentioned State. 

The above period, usually spoken of as the "period of priority for 
patents," is fixed by Article IV of the Convention of 1883 at six 
months, one month more being allowed for countries beyond sea. 

Section 103 of ''The Patents, Designs, and Trade-marks Act, 1883," 
grants a period of seven months to all foreign States to which the Act 
has been applied by Order in Council. 

It has been made clear at the Conference that the German Govern- 
ment would not enter the Union unless this period could be extended 
to twelve months. The object of the German Government appears to 
be to enable the German patentees to avail themselves of the results 
of the official examination practiced in Germany as to novelty of 
invention before they decide whether they will also take out their 
patents in foreign States. 

It has been found necessary in practice that a period of at least twelve 
months should be allowed for the completion of this examination. 

There is at present no similar examination in the United Kingdom, 
otherwise the extension suggested by Germany would probably become 
necessary. As the English law at present stands, it would be disad- 
vantageous to British inventors to extend the time during which British 
patentees are left in uncertainty whether or not they can be forestalled 
by means of patents taken out by foreigners in the United Kingdom 
under the Convention. 

It would consequently be necessary, if the German proposal were 
hereafter entertained, to make some provision to obviate this incon- 
venience. This might possibly be done by requiring foreigners who 
apply in the United Kingdom for patents under the Convention, to file 
with their application a complete specification setting out fully the 
objects and mode of working of their patents, and by shortening the 
period at present allowed for the acceptance of that specification. At 
present a period of nine months is allowed before the complete specifi- 
cation must be filed, and the latter specification need not be accepted 
until the expiration of twelve months from the date of the application. 
These periods may be extended to ten and fifteen months, respectively. 

The proposal put before the Conference was to extend the period of 
priority fixed by the Convention in the case of patents to twelve months, 
and in the case of trade-marks to four months in all cases. 

We stated our readiness to agree to seven months for patents and 
four months for trade-marks, as now provided by English law. A 
vote on the extension to twelve months was eventually taken, with the 
following result : 

Ayes (9) Noes (4). Abstention (1). Reserved vote (1). 

Belgium. France. Denmark. Great Britain. 

BraziL Portugal. 

Spain. Scrvia. 

United States. Tunis. 

Italy. 
Norway. 
Netherlands. 
Sweden. 
Switzerland. 

Germany and Austria had no votes, not being as yet Parties to the 
Union. 

S. Doc. 20 15* 



216 REVISION OF STATUTES EELATING TO PATENTS, ETC. 

As it was clear that unanimity could not be obtained, and bearing in 
mind the importance which is attached to the entry of Germany into 
the Union, we thought it best to reserve our vote, so as not to have 
the appearance of closing the door to possible future negotiations. 

(h) FORFEITURE OF PATENTS FOR NONWORKING. 

Several of the Contracting States are desirous of adding to the Con- 
vention provisions to mitigate the severity of the laws in force in some 
of the States of the Union, which provide for the forfeiture of patents 
which are not being worked in the countries in which they are taken 
out by foreigners. 

The proposal on this subject, which was brought forward by the 
International Bureau as a basis of discussion, was to add the following 
two paragraphs to Article V of the convention of 1883: 

[French text proposed.] [Translation.] 

Cependant, 11 ne sera soumis ^ cette Nevertheless, he shall only be subject 

obligation qu'apres un delai minimum de to this obligation after a minimum delay 

ans, k r expiration duquel la d6- of years, after the expiration of 

cheance du brevet pourra etre prononcee, which judgment may be given in favor of 

si le brevets ne justifie des causes de son the forfeiture of the patent if the patentee 

inaction. fail to account for his inaction. 

Sera consider^e comme une des causes The following shall be considered as 

justifi^es d'inaction, 1' absence de toute one of the justifiable grounds of inaction: 

offre faiteau brevete d'acquerir de lui des The absence of any offer to the patentee 

licences k des conditions equitables, aprds to acquire licenses from him on equitable 

qu' il aura pro voquedetelles off res par des terms after he shall have invited such 

publications reconnues suffisantes. offers by the publication of notices recog- 
nized as satisfactory. 

Under the English law patents are not forfeited for nonworking, 
but nonworking is one of the grounds on which compulsory licenses 
may at any time be obtained under section 22 of the Act of 1883. 

In the course of the discussions on this subject it appeared that the 
proposal of the Bureau was intended to afi'ect only the forfeiture of 
patents, and was not designed in any way to modify the law as to com- 
pulsory licenses under section 22. No objection was therefore raised 
to our proposal to make this clear by substituting the words " le brevet 
ne pourra etre frappe decheance pour cause de non exploitation," for 
the words "il ne sera soumis a cette obligation," on the first line of 
the above paragraphs. 

The proposal as thus amended would have had the effect of afford- 
ing some protection against forfeiture to B:'itish patents taken out in 
foreign countries, while in no way affecting our law under section 22. 

Considerable divergence of opinion was manifested as to the mini- 
mum period at the expiration of which a patent should be forfeitable 
for nonworking, the French Delegates being strongly in favor of not 
extending this period beyond two years, while several of the Dele- 
gates, including those of Germany, were very desirous that it should 
be extended to three years. 

The French Delegates strongly objected to the second of the pro- 
posed additional paragraphs, which was supported by Germany and 
other States. 

As it became evident that unanimity was not procurable on this sub- 
ject the question was reserved for future consideration. 

Germany will probably not join the Union unless the three years can 
be granted. 



REPORT BRITISH DELEGATES TO BRUSSELS CONFERENCE, 189^ 



217 



(c) ARTICLE VI RELATIVE TO THE OBLIGATION TO REGISTER A TRADE- 
MARK, "telle quelle," or in the form originally registered 

IN ANOTHER STATE OF THE UNION. 

Article VI of the Convention of 1883 is as follows: 



[French text,] 

Toute marque de fabrique ou de com- 
merce r^gulierement deposee dans le pays 
d'origine sera admise au depot et prot^- 
g^e telle quelle dans tons les autres pays 
de r union. 

Sera consid^re comme pays d'origine le 
pays oii le deposant a son principal 
^tablissement. 

Si ce principal ^tablissementn' est point 
situe dans undes pays de 1' union, sera 



considere comme pays 
appartient le deposant. 



origine 



celui 



Le d^p6t pourra ^tre refus6 si 1' object 
pour lequel il est demand^ est considere 
comme contraire 4 la morale ou k I'ordre 
public. 



[Translation.] 

Every trade-mark duly registered in 
the country of origin shall be admitted 
for registration and protected in the form 
originally registered in all the other coun- 
tries of the union. 

That country shall be deemed the coun- 
try of origin where the applicant has his 
chief seat of business. 

If this chief seat of business is not situ- 
ated in one of the countries of the union, 
the country to which the applicant be- 
longs shall be deemed the country of 
origin. 

Registration may be refused if the ob- 
ject for which it is solicited is considered 
contrary to morality or public order. 



Paragraph 4 of the Final Protocol adds the following explanations: 



4. Le paragraphe 1®' de 1' Article VI 
doit etre entendu en ce sens qu'aucune 
marque de fabrique ou de commerce ne 
pourra etre exclue de la protection dans 
I'un des Etats de 1' Union par le fait seul 
qu'elle ne satisferait pas, au point de vue 
des signes qui la composent,, aux condi- 
tions de la legislation de cet Etat, pourvu 
qu'elle satisfasse, sur ce point, ^ la legis- 
lation du pays d'origine, et qu'elle ait et^, 
dans ce dernier pays, I'objet d'un depot 
regulier. Sauf cette exception, qui ne 
concerne que la forme de la marque, et 
sous reserve des dispositions des autres ar- 
ticles de la convention, la legislation inte- 
rieure de chacun des Etats recevra son 
application. 

Pour ^viter toute fausse interpretation, 
il est entendu que 1' usage des armoiries 
publiques et des decorations pent etre con- 
sidere comme contraire k I'ordre public 
dans le sens du paragraphe final de 1' Ar- 
ticle VI. 



4. Paragraph 1 of Article VI is to be 
understood as meaning that no trade-mark 
shall be excluded from protection in any 
State of the Union from the fact alone 
that it does not satisfy, in regard to the 
signs composing it, the conditions of the 
the legislation^ of that State; provided 
that on this point it comply with the leg- 
islation of the country of origin, and that 
it had been properly registered in said 
country of origin. With this exception, 
which relates only to the form of the 
mark, and under reserve of the provisions 
of the other articles of the convention, the 
internal legislation of each State remains 
in force. 

To avoid misconstruction, it is agreed 
that the use of public armorial bearings 
and decorations may be considered as be- 
ing contrary to public order in the sense 
of the last paragraph of Article VI. 



The difficulties to which these stipulations have given rise in England 
are well known. 

The fundamental principle of the Union, as fixed in Article II of the 
Convention, is that subjects of any State of the Union shall enjoy in 
the other States the same protection as natives for patents and trade- 
marks, but no more. It is difficult to reconcile this principle with the 
stipulations of Article VI and paragraph 4 of the Final Protocol, and 
the problem has already become the subject of judicial decisions and 
of official correspondence in England. 

In accordance with our instructions, we first submitted to the Con- 
ference the following proposition, founded upon a suggestion orig- 
inally made by Mr. Herbert Hughes, as a means of giving eflect to the 



218 REVISION OF STATUTES RELATING TO PATENTS, ETC. 



provisions of section 10 of the Patents, Designs, and Trade-marks Act 
of 1888, and otherwise meeting the difficulty: 

Article YI to be maintained in its present form, with addition of the 
following provisions: 

This ground of refusal is applicable to marks containing — 

(a) Public arms and decorations. 

(6) A word or words referring to the nature or quality of the goods, or a geograph- 
ical word or words, unless the depositor state in his application that he lays no claim 
to any exclusive right to the use of these words or names. 

(c) The name or names of a person or Company, unless such name be printed or 
woven in a distinctive shape, or consist of the written signature, in original or fac- 
simile, of the person or Company which makes the deposit. 

Paragraph 4 of the Final Protocol to be suppressed. 

We accompanied this proposition by the " Expose des Motifs," which 
forms Inclosure 1 in the present dispatch. 

This proposition met with little support, and our next attempt to 
meet the difficulty was to concur in the making of a proposal by the 
Austrian Delegate to the following effect: 

Replace the first paragraph of Article VI by the following: 

"No trade-mark regularly deposited in the country of origin can be refused regis- 
tration in the other countries of the Union, except for reasons which would equally 
prevent the registration of marks by natives." 

This proposal would, we believe, have secured a majority of votes, 
but evidently did not command the unanimity necessary for a revision 
of the Convention. 

After a prolonged discussion lasting over several days, we recurred 
to our original proposal as amended in the following shape: 

The EngHsh Delegation proposes to 
maintain in its integrity Article VI of 
the Convention, as well as No. 4 of the 
final protocol, with the addition of the 
following provision : 

"It shall be permissible to each of the 
contracting States to refuse deposit in the 
following cases : 

"1. Marks consisting exclusively of 
the name or names either of a person or 
of a company, unless these names be pre- 
sented for deposit in a distinctive shape, 
or consist of the signature m original or 
in facsimile either of the person or of the 
company which makes the deposit ; this 
provision does not in any way infringe 
Article VIII of the Convention. 



La Delegation Anglaise propose le main- 
tien integral de 1' Article VI de la Con- 
vention, ainsi que du numero4 du proto- 
cole de cloture, en ajoutant k celui-ci la 
disposition suivante : 

"Pourront etre refusees au depot dans 
chacun des Etats contractants : 

"1. Les marques consistant exclusive- 
ment dans le nom ou les noms soit d'une 
personne, soit d'une Soci^t^, a moinsque 
ces noms ne soient presentes au depot sous 
une forme distinctive, ou qu'ils ne con- 
sistent dans la signature en original ou en 
fac-simil6 soit de la personne, soit de la 
Societe qui opere le d^pot ; cette disposi- 
tion ne porte aucune atteinte a F Article 
VIII de la Convention. 

"2. Les marques qui se composent soit 
d'une designation necessaire pour I'indi- 
cation de I'espece ou de la qualite des 
produits, soit de noms geographiques, a 
moins que dans la demande le deposant 
ne declare qu'il ne pretend a aucun droit 
exclusif k T usage de ces designations ou 
noms Isolds, et sans prejudice de la pro- 
tection due aux indications de provenance. 

"Les denominations n'indiquant pas la 
provenance, ainsi que les denominations 
de fantaisit dans les deux cas qui prece- 
dent (1 et 2) continueront a etre protegees. 

"3. Les marques qui comprennent des 
armoiries publiques et des decorations 
sans autorisation des pouvoirs comp6- 
tents." 



"2. Marks consisting either of a desig- 
nation necessary for the indication of the 
nature or quality o. products or of geo- 
graphical names, unless the depositor in 
his application makes a declaration to the 
effect that he lays no claim to any exclu- 
sive right to the use of these designations 
or names by themselves, and without 
prejudice to the protection to which indi- 
cations of origin are entitled. 

"Denominations which do not indicate 
origin, as well as invented names in the 
two preceding cases (1 and 2) , shall con- 
tinue to be protected. 

"3, Marks which include public arms 
or decorations without sanction from the 
proper authorities." 



KEPORT BRITISH DELEGATES TO BRUSSELS CONFERENCE, 1897. 219 

• 

It is probable that this would have been sufficient to meet the exist- 
ing English law, but the form is complicated owing to the necessity of 
making compromises to meet the views insisted on by various Dele- 
gates, and we should not recommend that this form should be adopted 
as the best in case the matter should be hereafter reopened by Her 
Majesty's Government. 

The proposition in question was put to the vote with the following 
result: Ayes, 9; noes, 5; abstention, 1. 

Germany and Austria supported our proposal, but not being yet 
members of the Union had no votes. 

Supporting without 

VOTE. 

Germany. 
Austria. 



Ayes. 


Noes. 


Abstaining. 


Holland. 


France. 


Belgium. 


Switzerland. 


Tunis. 




Norway. 


United States. 




Sweden. 


Italy. 




Denmark. 


Portugal. 




Spain. 






Brazil. 






Servia. 






Great Britain. 







The practical result, therefore, was 11 to 4 in favor of our proposal. 
There is some reason to believe that the United States Delegate might 
have reconsidered his vote if the question had been reopened, and that 
possibly Italy might have given way if eventually unanimity had been 
secured. 

The chief and, indeed, the only serious opponents to the principle 
of our proposals for an alteration of Article VI were the French Dele- 
gates, who rejected every suggestion put forward by us on this point, 
and who were firm in maintaining the existing text intact. We could 
not move them from this position, even by pointing out that the logical 
consequence of their attitude was that if, say, in a South American 
State, where the French or English language was not spoken, anyone 
succeeded in obtaining the registration of the words "Bordeaux," 
"Burgundy," or "Champagne" as trade-marks, Great Britain might 
be compelled, on a strict interpretation of Article VI and paragraph 4 
of the Fmal Protocol, to register these words as trade-marks in the 
form originally registered, and that the exclusive use of those words 
would then be vested in the person so registering them, as against 
even wine growers in those very districts seeking to sell their wares 
in Great Britain. 

It became clear in the course of the discussions that the practice 
of many States of the Union is identical with our own in this particu- 
lar, though the reasons given may be different, and we consider that 
the decisive majority obtained on our proposal is a sufficient argument 
in favor of the maintenance of the existing practice of the English 
Courts. 

The result of the vote being a failure to obtain unanimity, it was 
evident that Article VI of the Convention could not at present be 
amended, and as we did not think it desirable to make any further 
efforts at conciliation the question was reserved for ulterior consid- 
eration. 

{d) FALSE INDICATIONS OF ORIQIN. 

Some proposals for the amendment of the Arrangement of Madrid 
of the 14th April, 1891, which had been made by the International 



220 BE VISION OF STATUTES RELATING TO PATENTS, ETC. 

Bureau and by the Spanisn Government, were eventually dropped, 
after. a long discussion. It was difficult to understand the exact posi- 
tion assumed by the Spanish, Portuguese, and French Delegates on the 
question whether the effects of the Arrangement of Madrid can be 
applied to goods and subjects of countries of the Union who have not 
adhered to that Arrangement. We did not think it desirable to enter 
into the discussion further than to explain the existing English law 
and practice on the point as enabling Her Majesty's Government to 
seize any goods, whencesoever arriving, which bear false indications 
of origin. We further maintained the right of Great Britain to enter 
into arrangements with any State of the Union by which each Con- 
tracting State should bind itself to seize all goods bearing false indi- 
cations o«f origin. 

In regard to the question of what constitutes a false indication of 
origin as applied to wines, we made the following declaration: 

La Grande-Bretagne par sa legislation Great Britain by existing law gives 

actuelle donne eff et pleinement et entiere- complete effect to the Arrangement of 

ment k I'Arrangementde Madrid tel qu'il Madrid in its present form, and the Eng- 

exists, et la loi Municipale Anglaise ne lish Mmiicipal law derogates in no respect 

porte aucune atteinte a cet arrangement, from that Arrangement. 

Selon les Reglements de Douane en Under the Customs regulations in Eng- 

Angleterre on pent admettre en franchise land any goods may be admitted to 

des produits quelconques qui portent en entry which bear, in clear and legible 

caracteres manifestes et apparentes une characters, an indication of origin which 

indication de provenance qui n'est pas is not false; for example, *'Cape port," 

fausse; par example, "Cape port," "Swiss champagne,"^ for it is evident 

"Swiss champagne," car il est evident that in such cases the indication of origin 

que dans ce cas la 1' indication d'origine consists in the precise mention of the 

consiste dans la mention precise de la locality from which the goods come. 
localite d'ou viennent en veritie ces pro- 
duits. 

The question of false indications of origin having been disposed of 
b}'^ the withdrawal of all the proposed amendments, the Arrangement 
of Madrid remains untouched. 



Toward the close of the Conference, it was found that unanimity 
was impossible on the three points (a), {h), and (c), above indicated, but 
unanimity had already been arrived at on several other proposed 
amendments of the Convention of 1883. 

The President therefore proposed that these three points should be 
reserved for an attempt to come to some understanding by means of 
diplomatic correspondence to be initiated by Belgium, and that if an 
accord should be established in principle by that means, these points 
should be again treated at an adjourned meeting of the present 
Conference. 

One other point would also be reserved for consideration at such an 
adjourned meeting, viz, the following additional article to the Con- 
vention suggested by France: 

The subjects or citizens of States j)arties to the Convention (Articles II and III) 
shall enjoy, in all the States of the Union, the protection accorded to nationals against 
dishonest competition (concurrence d^loyale) . 

This suggestion was received with favor by the Conference, but 
unanimity could not be obtained, as four Delegates, being without in- 
structions on the point, reserved their votes. 

The addition of such an Article would be of especial advantage to 
Great Britain in furtherance of the interests of honest trade. 



REPORT BRITISH DELEGATES TO BRUSSELS CONFERENCE, 1897. 221 

The Conference ended in the signatiu'e by all the Delegates of the 
inclosed Final Protocol, containing proposed amendments to the Con- 
vention of 1883, which the Delegates submit for the consideration of 
their respective Governments. 

The following observations may be made respecting the various 
Articles contained therein: 

Amendmient to Article III. — ^The words "effectifs et s^rieux" are 
added to the original text for the purpose of ruling out establishments 
of a fictitious character. 

Amendment to Article IV. — The only respect in which this Article 
jaas been altered is by striking out of the fourth line of the second 
paragraph the words ''par un tiers" after the word "exploitation." 
It had been suggested that these words might be taken to imply that 
the working of the patent by the applicant himself during the period 
of priority would invalidate subsequent registration under the Conven- 
tion. The omission of the words will not necessitate any alteration in 
the English law; and if it has any effect on foreign patent laws, the 
alteration will benefit the British patentee, as it will enable him to 
work his patent during the period»-of priority without any fear of for- 
feiting his right to registration in any other State of the Union. 

Proposed cmditional Article IVhis. — This is a new Article. Its effect 
will be that patents for the same invention taken out in different States 
of the Union will be independent of one another, and of similar patents 
granted outside the Union. At present, all patents taken out in Eng- 
land are independent of patents for the same invention taken out 
in foreign countries, and the new Article therefore involves no altera- 
tion in the English law. But hitherto ever}^ patent which has been 
granted in the United States for an invention previously patented in 
any foreign country has been limited so as to expire at the same time 
with the foreign patent. As the ordinary life of a patent is 17 years 
in the United States and 14 years only in the United Kingdom, when 
a patent has been granted in the United States for an invention previ- 
ously patented in the United Kingdom, its life has been limited to 14 
years from the date of application for the patent in Great Britain. 
This will no longer be the case, as the American law will be assimilated 
to the English law in this respect as from the 1st of January next. 

The ordinary life of a British patent is shorter than that of a patent 
in any other State in the Union and, consequently, the alteration is in 
favor of British patentees. 

The last two paragraphs of Article IV his apply the Article to pat- 
ents now in existence and to patents in existence in any State at the 
time of its accession to the Union, but the Delegate of the United 
States made a declaration at the final stage of the proceedings that his 
country could not bring in the legislation which would be necessary 
to carry the second paragraph of this new Article into effect, so far as 
the United States were concerned. 

Addition to Article IX. — This is proposed in order to provide in 
this Article the alternative of prohibition which already exists in the 
Arrangement of Madrid relative to false indications of origin. It 
will probably strengthen the hands of some States who are not at 
present able to take effective action by means of seizure in accordance 
with Article IX as it stands at present. 

Addition to Article X defines an "interested party" in a manner 
which seems sufficient to meet the requirements of British Trade. 



222 REVISION OF STATUTES DELATING TO PATENTS, ETC. 



Amendmient to Article J^T speaks for itself, and seems to be unob- 
jectionable. 

Amendment to Article XIY merely omits an unnecessary reference 
to the former meeting at Rome. 

Amendment to Article JTFZ defines the procedure in regard to acces- 
sions to the Union in a more convenient mode than that in the existing 
Convention. 

None of these amendments appears to give rise to any objection, or 
to require fresh legislation in the United Kingdom, and we venture to 
recommend the first Final Protocol for signature on behalf of Her Maj- 
esty's Government within the prescribed period of six months. 

The second Final Protocol relates to the Madrid Arrangement for the 
international registration of marks, to which Great Britain is not a 
party. We did not, therefore, sign it, and, it calls for no observation 
on our part. 

At the end of the sittings, the United States Minister gave an invita- 
tion for the next meeting of the Union to be held at Washington, at a 
date to be hereafter fixed. This proposal met with general assent. 
We reserved the expression of the opinion of Her Majesty's Govern- 
ment, as we had received no instructions on the subject. 

As a summary of the above Report, we may state that if the positive 
results of the Conference are not great, the thorough discussion to which 
the disputed points have been subjected may possibly clear the ground 
for the establishment of a general accord. 

It is evident that the German Government will not join the Union 
unless satisfaction is given to them on two points, viz: 

(1) Agreement to three years as the minimum period for the forfeiture 
of patents for non working; and 

(2) The extension of the period of priority for patents from six to 
twelve months. 

Great Britain could grant the former of these concessions without 
fresh legislation. Not so, however, as regards the latter. 

It will be for Her Majesty's Government to consider whether, if an 
Agreement can be reached between Great Britain and France and the 
other contracting States as to Article YI, relative to the registration 
of a trade-mark "telle quelle," it is desirable or not to undertake the 
legislation which would be required to give effect to an extension of 
the period of priority for patents from six to twelve months. If this 
could be done, every obstacle, so far as Great Britain is concerned, 
would apparently be removed to the adhesion of Germany to the Union. 

When the proces-verlavjx of the conference are printed in a complete 
shape we shall have the honor to send copies for the use of the Board 
of Trade. 

As regards the Final Protocol, which we have signed, we venture to 
express the opinion that it contains some useful amendments to the 
Convention of 1883, and that none of its stipulations are open to objec- 
tion as regards British interests. If it be accepted by Her Majesty's 
Government, it will be necessary at the time of its signature by Her 
Majesty's minister at Brussels to make a declaration as to the extent 
of its application to British colonies, of which two, viz, Queensland 
and New Zealand, are already parties to the Union. 

In concluding this dispatch, we desire to record our grateful appre- 
ciation of the support afforded to us by Her Majesty's minister, the 



I 



EEPOET BRITISH DELEGATES TO BRUSSELS CONFERENCE, 1897. 223 

Hon. Sir F. Plunkett, who was always ready and able, by his influence 
and high position, to help us in any difficult}^ 

We venture also to suggest that the thanks of Her Majesty's Gov- 
ernment are due to Mr. Herbert Hughes for his services as Technical 
Adviser to the British Delegates. The suggestion originally made by 
him for an amendment of Article VI of the Convention formed the 
basis of the proposals made by us to the Conference on this difficult 
point ; and his legal knowledge and general counsel proved invaluable 
during the course of the proceedings. 

We have also to express our thanks to Mr. Charles Somers-Cocks 
for his efficient services as Secretary to the British delegates. 
We have, etc., 

Charles B. Stuart Wortley. 

H. G. Bergne. 

C. N. Dalton. 



pnclosure 1— Translation.] 
Paper presented by the British delegation to the conference. 

The application of Article VI and of No. 4 of the Final Protocol has given rise in 
England to rather serious difficulties. The Conference may be reminded that the 
true principle of the Union established in Article II of the Convention consists in 
this, that subjects of each of the contracting States are entitled to enjoy in the other 
States the same advantages as, and not superior advantages to, nationals. 

Article VI in its present form and the interpreting Protocol appear to authorize the 
foreign depositor to claim protection for a mark for which registration would not be 
accorded to a national, because the local law does not allow of such a mark being 
considered as entitled to registration. 

The Government of Her Britannic Majesty hesitate to give their assent to a pro- 
vision in virtue of which a stranger might claim in England advantages superior to 
those enjoyed by nationals, and it seems difficult to them to make the stipulations of 
Article II tally with those of Article VI and of No. 4 of the Final Protocol. The 
British delegates beg the Conference to give due weight to this difficulty. 

The Convention, taken as a whole, appears to aim at securing a right of priority 
for obtaining registration rather than an absolute right to such registration, and at 
laying down that the depositor ought to submit to local law in every country where 
he claims registration. 

An instance may be quoted which will prove to the Conference the danger of allow- 
ing the registration of marks without any restriction; if, for instance, some one suc- 
ceeded in getting the words * ' Pig iron ' ' registered as a trade-mark in one of the 
Contracting States, would all the States of the Union be bound to grant protection to 
these words, even England and the United States, where no other term exists for 
designating the substance? 

It can, moreover, be affirmed that the principle of the British proposal should be 
admitted by all the States as resulting from international law. 

It would be contrary to the true interests of all Unionists to grant to an individual 
the exclusive right of using terms bearing on the nature or quality of goods, geo- 
graphical name, or names of individuals or societies. Such words or names should 
always remain pubhc property; no one can wish a monopoly in them to be granted 
to a private person. 

Difficulties have already arisen in regard to this matter in England, and the Gov- 
ernment of Her Britannic Majesty considers the moment to have come when the real 
bearing of the provisions on this point should be defined. 

^ Acting on this theory, the British Delegates venture to submit to the favorable con- 
eideration of the Conference their proposal, which aims at inserting in the Convention 
a series of exceptions to the principle which appears to be involved in the present 
text of Article VI and of No. 4 of the Final Protocol. This proposal keeps in view the 
amendments proposed by the International Bureau and by the Administration of the 
Netherlands. Should it be accepted, No. 4 of the Final Protocol would cease to be 
of use and be suppressed. 



Chapter VII. 

RESOLUTIONS ADOPTED BY THE PATENT CONGRESS HELD AT 
THE VIENNA EXPOSITION OF 1873. 



The following resolutions were adopted at the patent congress held 
at Vienna in 1873 in connection with the Vienna exposition: 

I. The protection of inventions should be guaranteed by the laws of all civilized 
oations, because — 

(a) The sense of right among civilized nations demands the legal protection of 
mtellectual work. 

(6) This protection affords, under the condition of a complete specification and 
publication of the invention, the only practical and effective means of introducing 
neAV technical methods without loss of time and in a rehable manner to the general 
knowledge of the pubhc. 

{c\ The protection of invention renders the labor of the inventor remunerative, 
and induces thereby competent men to devote time and means to the introduction 
and practical application of new and useful technical methods and improvements and 
attracts capital from abroad which, in the absence of patent protection, will find 
means of secure investment elsewhere. 

(d) By the obligatory complete publication of the patented invention the great 
sacrifice of time and of money which the technical application would otherwise 
impose upon the industry of all countries will be considerably lessened. 

(e) By the protection of invention secrecy of manufacture, which is one of the 
greatest enemies of industrial progress, will lose its chief support. 

(/) Great injury will be inflicted upon countries which have no rational patent 
laws by the native inventive talent emigrating to more congenial countries where 
their labor is legally protected. 

(g) Experience shows that the holder of a patent will make the most effectual 
exertions for a speedy introduction of his invention. 

II. An effective and useful patent law should be based on the following principles: 

(a) Only the inventor himself, or his legal representative, should be entitled to a 
patent. 

(b) A patent should not be refused to a foreigner. 

(c) It is advisable, in carrying out these principles, to introduce a system of pre- 
liminary examination. 

(d) A patent should be granted either for a term of fifteen years or be permitted to 
be extended to such a term. 

(e) Simultaneously with the issue of a patent a complete publication of the same 
should take place, rendering the technical application of the invention possible. 

(J) The expense of obtaining a patent should be moderate, but in the interest of 
the inventor progressive scale of fees should be established, enabling him to abandon, 
when convenient, a useless patent. 

(g) Facilities should be given by a weU-organized patent oflice to obtain in an easy 
manner the specification of a patent, as well as to ascertain what patents are still in 
force. 

(h) It is advisable to establish legal rules, according to which the patentee should 
be induced, in cases in which the public interest may require it, to allow the use of 
his invention to all suitable applicants for an adequate compensation. 

(i) The nonapplication of an invention in one country shall not involve the forfeit- 
ure of the patent if the patented invention has been carried into practice at all, and 
if it has been rendered possible for the inhabitants of such country to purchase and 
make use of the invention. 

(k) In all other respects, and particularly as regards the proceedings in the grant- 
ing of patents, the congress refers to the English, American, and Belgian patent laws, 
and to the draft of a patent law prex^ared for Germany by the society of German 
engineers. 
224 



PATET^TT CONGRESS, VIENNA, 1873. 225 

Til. Considering the great differences in present patent administration and the 
altered international commercial relations, the necessity of reform is evident ; and it 
is of pressing moment that Gof^frnments should endeavor to bring about an inter- 
national understanding upon patent protection as soon as possible. 

IV. The congress empowers the preparatory committee to continue the work com- 
menced by this first international congress, and to use all their influence that the 
principles adopted be made known as widely as possible and carried into practice. 

V. The committee is likewise authorized to endeavor to bring about an exchange 
of opinions on the subject, and to call from time to time meetings and conferences of 
the friends of patent protection. 

VI. To this end the preparatory committee is hereby appointed to act as a perma- 
nent executive committee, with power to add other members to their number, and to 
appoint the time and place for the next meeting of the congress, in case such a meet- 
ing should be considered necessary for the promotion of the foregoing resolutions. 

COMMENTS BY MR. GKEELEY ON THE ABOVE RESOLUTIONS. 

A comparison of the statement of the essential principles of an 
effective and useful patent law contained in these resolutions with the 
United States laws relating to patents will indicate the extent to which 
the members of this congress had been impressed with the advantages 
of our system. 

(a) Only the mventor himself or his legal representatives should he 
entitled to a patent. 

This is characteristic of the United States law. In certain European 
countries, prior to 1873 and for some j^ears thereafter, the right to 
a patent was not recognized as the distinctive right of the inventor. 
In some countries to-day anyone who secures a knowledge of an inven- 
tion may secure a patent, if he is the first to apply, and may thereby 
obtain an exclusive right to the invention as against the inventor 
himself. 

(b) A patent should not he refused to a foreigner. 

Since 1832 the United States has by law recognized the right of a 
foreign inventor to a patent for his invention, and though by that law the 
foreign inventor was discriminated against in the matter of fees, a 
British subject being required to pay |500 and all other foreigners $300 
for a patent, instead of the $30 then required of citizens or residents of 
the United States, this discrimination was done away with by the law 
of 1861. Since that date the foreign inventor has been accorded the 
same rights as the citizen of the United States, except only that in 
determining the question of priority no proof of inventive acts done in 
any foreign country has been accepted. In many foreign countries prior 
to very recent years the discrimination against inventors not domiciled 
in the country amounted to the prohibition of the grant of a patent. 
In others the conditions under which an inventor not domiciled in the 
country could take out a patent were so onerous as to practically 
amount to prohibition. In practically all foreign countries a citizen of 
the United States may now obtain a patent for his invention on sub- 
stantially the same conditions which apply in case of inventors domiciled 
in the country. 

(c) It is advisahle^ in cafrryi/ng out these principles^ to carry out a sys- 
tem of preliminary examination. 

Preliminary examination as to novelty has always been a feature of 
the United States law. In 1873 no European country had adopted 
such a system. A system of preliminary examination has since been 
adopted by Germany (law of July 1, 1877), by Sweden (law of May 16, 
1884), by Norway (law of June 16, 1885), by Japan (law of 1888), by 



226 EEVISION OF STATUTES RELATING TO PATENTS, ETC. 

Denmark (law of April 13, 1894), and Austria (law of January 11, 
1897). Canada also has adopted such a system and in Russia and in 
Switzerland preliminary examination to a certain extent is made. 

(d) A patent should he granted eitJiefr for a term of fifteen years^ or he 
permitted to he extended to such a term. 

Prior to 1870 the term for which a patent was granted in the United 
States was fourteen years, with the possibility of extension for seven 
years additional. Since 1870 the term has been seventeen years. In 
some of the European countries, prior to 1873 the term was as short as 
%^^ years, and in comparatively few countries was the term longer 
than ten years. The term is now in practically all of those countries 
fifteen years or longer. In Great Britain the term is fourteen years. 

(^) Sirrmlta/irieously with the issue of a patent a coinplet^- rmhlicatiori of 
the same should take place^ rendering the technical application of the 
invention possible. 

By the law of 1861 the Commissioner of Patents was authorized to 
print copies of patents issued. Prior to that date in very few countries 
were patents printed and copies readily obtainable. The practice of 
printing patents as issued is now very general in the more important 
foreign countries, though in some only an abstract is printed, and in 
others, patents may on certain conditions be held secret, only the title 
being published. 

(/*) The expense of obtaining a patent shmdd he moderate,' hut., in the 
interest of the inventor., progressive scale of fees should he established^ 
enabling him to abandon^ when convenient^ a useless patent. 

The fees for obtaining a United States patent have since 1861 been 
fixed at $35. In most of the European countries annual taxes increas- 
ing in amount are required to be paid on penalty of forfeiture of the 
patent. In some of these countries the total amount of fees necessary 
to be paid to keep a patent in force throughout a term of fifteen years 
is from $800 to $1,600. 

ig) Faxiilities should he given., by a well-organized patent office., to obtain 
in an ea^y manner the specification of a patent., as well as to ascertain 
what patents are still in force. 

Through the publication of patents immediately on their issue in the 
United States these facilities are given. In some of the European 
countries, as above stated under (^), patents could be kept secret, and 
in few countries up to 1873 or later were there adequate facilities for 
obtaining information as to patents granted. 

(A) It is advisable to establish legal rules, acco7'ding to which the pat- 
entee should he induced., in cases in which the public interest may require 
it., to aUow the use of his invention to all suitable applicants far an ade- 
quate compensation. 

This principle has never been adopted by the United States. It 
was and is carried out in the patent systems of a number of the Euro- 
pean countries. It is b}^ no means certain that it is not a wise principle. 

{i) The nonapplication of an invention in one count7y shall not 
irwoVue the forfeiture of the patent, if the 2^cUented invention has beefti 
carried into practice at all, and if it has hee^i rendered possible for tlie 
inhabitants of such country to purchase and make use of tlie invention. 

The forfeiture of a patent previously granted in a foreign country 
for failure to carry it into practice in that country or in the United 
States has never been held to work a forfeiture of the patent granted 
hera Up to 1897, the term for which such foreign patent was granted, 



PATENT CONGRESS, VIENNA, 1873. 227 

if less than seventeen years, determined the term of the patent granted 
here. The law of March 3, 1897, did away with this limitation. The 
wisdom of this principle is now recognized by many of the European 
countries. 

By Mr. Forbes. Attention is called to Articles m to VI, which for 
the fii'st time proposed a common agreement of Governments on the 
subject of patent protection, and which, through the congress held at 
the Paris Exposition of 1878, led up to the Convention of Paris of 
March 20, 1883. 



Chapter VIII. 

CORRESPONDENCE ANB REPORTS RELATING TO THE CONFER- 
ENCES OF 1880, 1883, 1886, AND 1890. 



Section 1. 



COERESPONDENCE RELATING TO THE INTERNATIONAL CONFERENCE AT PARIS 

IN 1880. 

Mr, Evarts to Mr. Noyes, 

Department of State, 

Washington, Octoher 30, 1880, 

Sir: I sent you a telegram to-day in answer to yours of yesterday, 
and acquainted you with the designation of yourself and Mr. Putnam 
as delegates of the United States to take part in the conferences and 
discussions of the International Industrial Property Congress, which 
is to be held in Paris, commencing on the 4th proximo. It now 
becomes necessary to supplement that telegram with brief instructions 
for your guidance in the matter. 

The aims had in view in summoning this congress are explained very 
clearly and fully in the note which the French minister at this capital 
addressed to me on the 9th day of January last, and of which a copy 
is herewith transmitted to you. The subjects proposed for discussion 
are in a marked degree important to all countries whose trade and 
manufacturing industries have attained high development, and this 
country can not but feel the liveliest interest in any conclusions which 
may advance and benefit its commerce and manufactures. Neverthe- 
less, as I replied to Mr. Outrey's note of January 9, the internal 
regulation of those matters by the legislation of this country is so 
much a matter for domestic consideration and control, especially with 
reference to the question of trade-marks and their Federal protection 
under existing treaties, that this Department can not agree to submit 
such questions to the proposed congress, so far as the share of the 
United States therein is concerned, without the reservation that the 
conclusions of the conference on the subject must be considered as 
absolutely subordinate to such legislative provisions as may hereafter 
be made by this country. 

This reservation was made in full consonance with the proposal in 
Mr. Outrey's note, and particularly with its concluding clause, which 
looks upon the protocolized results of the contemplated congress as 
advisory merely, and referable to the several powers concerned, with 
a view to being subsequently completed, if approved by them, in the 
foimal manner usual with international conventions. 

It is believed that the familiarity of yourself and Mr. Putnam with 
the mdustrial interests of this country and the questions of law and 
legislation therewith connected, will obviate the necessity for any 
228 



PAEIS CONFEEENCE, 1880. 229 

detailed instructions on the points proposed for discussion. Much is, 
perforce, left to your discretion, and it is conceived that, even in 
advance of the receipt of this instruction, your own good judgment 
will have counseled the avoidance of any commitment of this Govern- 
ment to plans of reform which may not consult or comport with the 
entire legislative freedom, which, as the French Government is already 
aware, is reserved by us. 

As you are a salaried officer of this Government, your participation 
in the congress is merely honorary and carries no special emoluments 
with it. 

As the congress is expected to open before this instruction reaches 
you, it is not deemed necessary to give you formal powers. The tele- 
gram sent to you to-day and the notification of your designation, which 
I have conveyed to Mr. Outrey, wiU doubtless serve as ample warrant 
for your participation in the congress. 

I transmit for your information and as bearing upon the reservation 
herein expressed a copy of a recent important decision of the Supreme 
Court of the United States covering, in principle, the Federal protec- 
tion of trade-marks under treaty stipulations. 

Your report of the proceedings of the congress, with copies in 
duplicate, if possible, of the protocol of its sessions will be awaited 
with interest. 

I am, etc., 

Wm. M. Evarts. 



Mr, Outrey to Mr, Evarts, 

[Translation.] 

Legation of France in the United States, 

Washington^ November 26, 1879. 
Mr. Secretary of State: 

A number of importers of French goods doing business in the city 
of New York have just called my attention to the decision pronounced 
on the 17th instant by the Supreme Court of the United States on the 
subject of trade -marks, which they consider prejudicial to their inter- 
ests. Not having as yet received an authentic copy of the decision 
referred to, it is impossible for me to determine to what extent it is at 
variance with the stipulations of the treaty of April 16, 1869. The 
question, however, seems to me to be one of such importance that I 
do not hesitate to transmit to you their original communication. 
Be pleased to accept, etc. 

Max Outrey. 



pnclosure.] 

Messrs. Osborrij Son & Co. to Mr. Outrey. 

John Osborn, Son & Co., 
New York, November S4, 1879. 
Sir: The undersigned importers of merchandise from France desire to call the 
attention of your excellency to the decision of the Supreme Court of the United States, 



230 REVISION OF STATUTES EELATING TO PATENTS, ETC.* 

filed on the 17th of November, 1879, in the cases of the United States v, Witteman 
and others, declaring unconstitutional the acts of Congress on the subject of trade- 
marks. 

The opinion delivered contains this reservation: "The court wishes, however, to 
be understood as leaving the whole question of the treaty-making power of the Gen- 
eral Government over trade-marks and the duty of Congress to pass any laws neces- 
sary to carry such treaties into effect untouched." 

Relying upon the security offered by the treaty passed between France and the 
United States and by the laws passed to carry it into effect, the undersigned have 
gone to great trouble and expense for the purpose of protecting trade-marks of French 
citizens whose goods they import in large quantities. By the decision above referred 
to large intereste are jeopardized and the time and expense devoted to their protec- 
tion in the past go for naught. 

A timely compliance by Congress with the suggestion made by the Supreme Court 
as to the protection of rights pledged to French citizens by the treaty of 1869 may 
avert great loss. Each day's delay is of importance. Until Congress takes action 
the owners of foreign brands and trade-marks are at the mercy of the criminals 
emboldened by the knowledge that the Federal courts have been stripped of the 
power of punishing them. 

Under these circumstances we do not hesitate to call upon your excellency to use 
your influence for the protection of the French interests thus endangered and to 
pray your intervention with the Department of State, in order that the President of 
the United States may in his message to Congress, which meets on the first Monday 
of December, 1879, be induced to urge upon that body the immediate passage of a 
law to carry into effect the treaty with France. 

In the confidence that this request will receive from your excellency that consider- 
ation which the importance of the subject demands and which the interests of French 
citizens have never failed to obtain from you, the undersigned beg to subscribe them- 
selves, 

Your humble and obedient servants, 
- John Osborn, Son & Co., 45 Beaver street; Cazade, Crooks & Reynaud, 
26 South William street; E. La Montague, 53 Beaver street; Charles 
Graef, 65 Broad street; (an illegible signature^ ; FredDeBary & Co., 41 
and 43 Warren street; (an illegible signature) , 51 Warren street; Ren- 
auld, Francois & Co., 23 Beaver street; Edward Blackburn & Co., 10 
Beaver street; Arguimbau, Wallis & Co., 29 South William street; 
Alfred Pacontot, 6 South William; Ives, Beecher & Co., 98 Front 
street; (an illegible signature), 35 Beaver street; John Duncan's Sons, 
1 Union square; E. Hazard &Co., 193-198 Chambers street; H. K. & 
F. B. Thurber & Co., West Broadway, Reade and Hudson streets; 
Acker, Merrall & Condit, 130 and 132 Chambers street, Broadway 
and Forty-second street; C. Heerdt & Co., 93 Water street; J. H. 
Smith's Sons, 25 and 27 Peck slip; (an illegible signature), 12 Vesey 
gtreet; (an illegible signature) , 9 Whitehall street; Henry G. Schmidt 
& Co., 38 Beaver street; (an illegible signature), Jos. Bifflard's Sons; 
Park & Tilford. 



Mr. Outrey to Mr. JEJva/rts. 

[Translation.] 

Legation of France in the United States, 

Washington^ Ja/nuary 9^ 1880. 
Mr. Secretary of State: 

You are aware that a congress met at Paris during the universal 
exposition of 1878 for the purpose of considering questions relating 
to industrial property. The Grovernment of the United States was 
represented by three delegates at this congress, which was under the 
honorary presidency of the minister of agriculture and commerce. 
Its special object was the examination of questions having reference to 
patents, designs, industrial models, and trade-marks. 

Before adjourning the congress appointed a permanent commission, 
the members of which were divided Into national sections, and which 



PARIS CONFERENCE, 1880. 231 

was charged with the execution of the resolutions which had been 
adopted, and especially with bringing about the meeting of an inter- 
national conference having for its mission the adoption of the meas- 
ures necessary to secure as far as possible the unification of the diflferent 
systems of legislation relative to industrial property. 

This permanent commission, of which the delegates of the foreign 
governments represented at the congress were members, prepared a 
draft of a treaty to be concluded by the different adhering powers, 
the object of said treaty being to form of the contracting countries a 
"union for the protection of industrial property," and to fix the gen- 
eral principles which should, by common consent, be rendered uni- 
f oraaly applicable to the matter. 

This draft of a treaty was transmitted by the executive committee to 
the minister of agriculture and commerce, with a request that he would 
take the necessary steps to induce the Government of the Kepublic to 
take the initiative in bringing about the assembling of an international 
conference to carry out the work undertaken by the congress. Mr. 
Teisserenc de Bort thought that it was proper. to submit at first to the 
deliberations of an international conference only drafts of resolutions 
rather of an executive (administratif) than of a legislative character, 
easy of application, and whose adoption would not require serious 
modifications of the laws, which are based in various countries on differ- 
ent principles. He consequently requested the French section, acting 
as an executive committee and representing the commission of the con- 
gress, to extract from the draft of the treaty to be recommended to 
the governments for their adhesion those provisions which seemed 
to it to enter more particularly into this order of ideas. That section 
performed the task intrusted to it, and the result of its special work 
was transmitted to the minister of agriculture and commerce, who, 
appreciating the importance of the resolutions adopted by the congress, 
at once recognized that they were in all respects worthy of the solicit- 
ous attention of the French Government. 

His excellency the minister of foreign affairs instructs me to trans- 
mit to you a volume containing the reports of the sessions of the con- 
gress, together with a pamphlet relative to the plan presented by 
the executive committee, and to commend them to your most serious 
attention. 

As you will observe, the commission has divided its work into five 
parts. The first comprises those questions which are common to all 
branches of industrial property; the second is devoted to patents; the 
third to industrial designs and models; the fourth to trade-marks; and 
the fifth to the commercial name. It has, moreover, taken care to dis- 
tinguish in each one of these parts the provisions which it has thought 
could be immediately inserted in an international convention from 
those which, as they involve the modification of the laws of each coun- 
try, must for the present be considered only in the light of recom- 
mendations to the various governments. 

The minister of foreign affairs instructs me, in addressing this com- 
munication to you, to beg you to inform me whether the Government 
of the United States is disposed to send special delegates to an inter- 
national conference having for its object the examination and discus- 
sion of the conclusions of the commission. He expresses the hope that 
the Government of the United States, sharing the views of the con- 
gress and feeling convinced, as we are, of the high importance of the 

S. Doc. 20 16* 



232 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

questions which have reference to industrial property, will receive 
these overtures with favor. 

In case the labors of the conference should result in the adoption of a 
number of provisions suitable for incorporation in an international 
convention, the draft prepared by the special delegates might subse- 
quently be invested with the signatures of the representatives of all 
the adhering governments, being clothed with the necessary powers 
for that purpose. 

My Government would be glad to be informed, with as little delay 
as possible, of your intentions in this matter. 
Be pleased to accept, etc., 

Max Outrey. 



Mr. Wvarts to Mr. Outrey, 

Department of State, 

Washington^ March 19, 1880. 

Sir: I have the honor to acknowledge the receipt of your note of 
the 9th of January last, referring to the proceedings of the congress 
which was held at Paris during the Universal Exposition of 1878 for 
the purpose of considering questions relating to industrial property, 
and stating that the permanent commission appointed by that congress 
has requested the Government of France to take the initiative in bring- 
ing about the assembling of an international conference to carry out 
the work undertaken by the congress above mentioned; and accord- 
ingly, as instructed by the minister of foreign affairs of France, you 
inquire whether the Government of the United States is disposed 
to send special delegates to an international conference having for 
its object the examination and discussion of the conclusions of the 
commission. 

Your note, moreover, states that the permanent commission above 
mentioned has prepared a draft of a treaty to be concluded by the 
different adhering powers, the object of the proposed treaty being to 
form, of the contracting countries, a ' ' union for the protection of indus- 
trial property." You furthermore refer to the fact that it is proposed 
for the present to limit the international agreement in question to the 
making of such regulations as would not require serious modifications 
of the laws which are based in various countries on different princi- 
ples, the proposed regulations being embodied in a report which has 
been made to the French Government, a printed copy of which accom- 
panies your note. 

I observe, as you state in your note, that the subjects to be presented 
for the consideration of the proposed conference are five in number, 
viz: 

il) Questions common to all branches of industrial property. 

[2) Patents. 

Industrial designs and models. 
Trade-marks. 

(5) The commercial name. 

In reply to your note, I must, in the first place, observe that the 
condition of the legislation of this country with regard to trade- 
marks is such at this time that this Department can not agree to sub- 
mit that matter to the proposed conference without the reservation 



J 



PARIS CONFERENCE, 1880. 238 

that the conclusions of the conference on the subject must be consid- 
ered as absolutely subordinate to such legislative provisions as may 
hereafter be made by this country in relation to trade-marks. 

With this reservation just mentioned, this Government is willing to 
designate some suitable person as a special delegate to represent the 
United States in the proposed international conference. 
Accept, etc., 

Wm. M. Evarts. 



Mr. Outrey to Mr, Evarts, 

[Translation.] 

Legation of France in the United States, 

Profile House,, August 10,, 1880, 

(Received August 12.) 
Mr. Secretary of State: 

In the note which you did me the honor to write to me on the 19th 
of March last, in response to my communication of the 9th of January 
preceding, you were pleased to inform me that under a certain reserve 
the Government of the United States was disposed to accept the propo- 
sition for the meeting at Paris of the international conference to be 
charged with examining and discussing questions connected with the 
protection of industrial property. On the other hand, England, Aus- 
tria-Hungary, Belgium, Italy, Russia, and Switzerland have likewise 
made known their assent to the project of the meeting and have 
announced their intention to be represented thereat. 

The realization of the hope expressed by the international congress 
of 1878 being thus assured by these adhesions, the French Govern- 
ment has deemed that it is now proper to arrange for the meeting of 
the conference. In consequence the minister of foreign affairs charges 
me to invite the Government of the United States to take part in this 
meeting, the date of which is set for the 4th November next, and to 
ask it at the same time to be good enough to designate the delegates 
whom it may have chosen. In order to facilitate the labors of the 
conference it has been judged advisable to prepare a programme of the 
questions which would be the object of its deliberations. I have the 
honor to send you herewith four copies thereof. 

It is, however, understood* as M. de Freycinet informs me in his 
communication, that the decisions of the conference can not in an}^ 
manner be binding upon the powers which participate therein. The 
delegates will have no other mission than to study and discuss the 
questions which shall be submitted to them, and endeavor to come to 
an understanding, if it be possible, upon a scheme of rules of a nature 
to form part of an international convention, which would subsequent!}^, 
if acceptable, be signed by the diplomatic representatives of all the 
adhering Governments. 

I woiud be obliged to you, Mr. Secretary of State, to let me know 
if the date proposed for the meeting of the conference is acceptable 
to the Government of the United States. 

Be pleased to accept, etc., Max Outrey. 



234 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Programme of the principal questions to be submitted to the deliberations of the Intemaiional 
Conference for the protection of industrial property. 

GENERAL QUESTIONS, 

1. The adhering governments have agreed to form a Union for the protection of 

industrial property. 

2. The subjects of each one of the States of the Union shall enjoy in all the other 
States the same rights as the natives thereof, in the matter of patents of inventions, 
of designs and industrial models, of trade-marks, and any commercial use of firm 
names. 

3. A special service of industrial property shall be established in each country; a 
central depot of patents of invention of designs and industrial models of trade-marks 
and commercial names shall be annexed thereto, and be accessible to the pubhc. A 
periodical official journal shall be published for the service of industrial property. 
Measures shall be likewise taken for the publication of an international journal 
common to all the States of the union. 

4. Temporary protection shall be given to patentable inventions, designs, and 
industrial models, as well as the marks of trade and commerce which shall be repre- 
sented in international exhibitions either official or officially recognized. 

PATENTS OF INVENTIONS. 

5. The act of filing an application for a patent regularly performed in one of the 
States of the Union shall carry with it the priority of registration in all the other 
States during a period of . 

6. The introduction by patent in the countries where the patent has been issued 
of articles fabricated in any one of the States of the union shall not involve its 
annulment. 

DESIGNS AND INDUSTRIAL MODELS. 

7. Designs or models deposited in any one of the States of the Union shall be 
guaranteed in all the other States, and the ownership shall be considered as legiti- 
mately acquired by those who make usage of it conformably to the legislation of the 
country of origin. 

8. A deposit regularly mado in one of the States of the Union shall carry with it 
the priority of registration in the other States during the term of 

MARKS OF TRADE AND OF COMMERCE. 

9. Trade-marks entered in one of the States of the union shall be guaranteed in all 
the other States, and property shall be considered as legitimately acquired by those 
who make usage of it conformably to the legislation of the country of origin. 

10. Any registration regularly made in one of the States of the Union shall carry 
with it priority of registration in the other States during the term of 

11. All foreign products illicitly or unlawfully bearing the trade-mark of a manu- 
facturer or of a merchant doing business in the country of importation, or any indica- 
tion of being produced in the said country, shall be denied entry, be excluded from 
transit and public storage, and liable to be seized in any place whatever. 

COMMERCIAL FIRM NAMES. 

The commercial name of a firm constitutes a property which should be protected 
without distinction of nationality and without obligation of registry. 



2fr, Evarts to Mr. Outrey, 

Department of State, 

Washington, October 30, 1880. 
Sir: Referring to your note of the 9th of January last, acquainting 
me with the proposal of your Government to convene at Paris a con- 
gress to consider the international questions concerning industrial 



rii 



REPORT U. S. DELEGATE TO PARIS CONFERENCE, 1880. 235 



property, and to your later note of August 10, announcing the open- 
ing of that congress on the 4th proximo, 1 have now the honor to 
inform you that, in acceptance of the invitation so tendered to this 
country to participate in the proposed congress, this Government has 
designated as its delegates thereat Mr. Edward F. Noyes, the envoy 
extraordinary and minister plenipotentiary of the United States near 
the Government of the French Republic, and Mr. James O. Putnam, 
the minister resident of the United States at the Court of Belgium, 
subject to the reserves in the matter of domestic legislation contained 
in my note to you of the 19th of March last. 

1 should be gratified if you could kindly inform your Government 
by cable of the appointment of these delegates. 
Accept, etc., 

Wm. M. Evarts. 



Section 2. 
repoet of delegate from the united states to the conference at 

PARIS IN 1880. 

Legation of the United States, 

Brussels^ December 10,, 1880. 
Hon. William M. Evarts, 

Secretary of State. 

Sir: I have the honor to submit the following report of the pro- 
ceedings of the International Congress for the Protection of Indus- 
trial Property, held at the city of Paris, November 4-20, which I 
attended as a delegate representing the United States. 

The congress was organized on the 4:th of November. All the 
leading European States were represented, except Germany, and sev- 
eral of the lesser powers. 

Of the States beyond the sea the United States, Mexico, Argentine 
Republic, Brazil, Guatemala, Republic of Salvador, Uruguay, Vene- 
zuela, were represented. Among the delegates were several who, in 
their respective countries, are at the head of industrial departments 
and are familiar with every branch of the general subject. 

The exhaustive discussions in the two preliminary congresses — that 
at Vienna in 1873, and in Paris in 1878 — of the general principles 
underlying the questions which came before this congress narrowed 
the range of debate, and enabled the commission to proceed at once 
to the consideration of the specific points suggested. 

The congress was opened by an address of welcome by Mr. Barth6 
lemy St. Hilaire, the French minister of foreign affairs. He referred 
to the labors of the two previous congresses, which had led to the 
present commission, whose office it was to embody in a project of 
treaty relating to patents of mvention, industrial designs and models, 
trade marks and commercial names certain principles which all States 
could accept. 

That what was hoped from the labors of the congress was greater 
security of private rights in industrial property. 

Mr. Tirard, the French minister of agriculture, followed with a 
brief address of similar tenor. After a reference to the rapid advance 
in the communication of States and the progress of scientific discovery, 
he said that many enlightened and generous minded had felt that the 



236 BE VISION OF STATUTES RELATING TO PATENTS, ETC. 

progress of civilization should be brought in harmony with the advance 
of science, and protection should everj^where be afforded to property, 
to inventions, against those who rob inventors of the just rewards of 
their genius, and that traders should be secured the exclusive posses- 
sion of their trade-marks and commercial names. 

The present commission, he stated, could not be expected to make 
a perfect plan for an international treaty. In view of the diversity of 
existing legislation that must be a work of time. 

The legislation of States must be respected, but what is desirable is 
equal protection in all the States of the union with that granted their 
own citizens. 

That the tendency of our time was to unify peoples by a community 
of interests, and nothing could contribute so much to this general 
movement of prosperity and pacification as universal and equal laws 
protective of industrial property. 

These addresses were replied to in suitable terms by Minister Kern, 
the delegate from Switzerland. The congress then organized by the 
election of Senator Bozerian as president and Minister Jagerschmidt 
as secretary, both delegates from France. The president in a brief 
address presented the same geneia:l and broad views as had been 
expressed in the addresses of welcome. He said the congress had not 
to make a treaty, but a work preparatory; that it might require 
years to perfect an international system of laws, and if this congress 
should fail to perfect a satisfactory formula of a treaty a future con- 
gress might be necessary. 

France had accepted from the congress of 1878 the office of prepar- 
ing a project of treaty, which office had been discharged by Secretary 
Jagerschmidt. The ''^Frojet de loi^'' prepared by him was accepted by 
the congress as the basis for discussion. 

In answer to a preliminary inquiry by the president, France, Aus- 
tria-Hungary, Belgium, Brazil, Italy, Portugal, Sweden and Norway, 
and Venezuela, through their delegates, expressed a desire that the 
congress should prepare a basis of an international treaty. 

The delegates from Great Britain and the United States said that as yet 
they had not received the views of their Governments on that subject. 
Several delegates stated that, while their respective States had general 
sympathy with the objects of the congress, they took part in its delib- 
erations with all reserves, leaving their States free to adopt or reject 
any treaty the congress might propose. 

The president to these statements replied that the mission of the 
congress was to prepare a form of treaty to be submitted to the sev- 
eral States represented, for their free and independent action thereon; 
that such being the understanding, the congress could work freely for 
the common good. 

A committee consisting of the delegates from France, England, 
Austria, Belgium, Italy, Portugal, and Switzerland was appointed to 
discuss and report upon all propositions requiring more full consid- 
eration than the congress as a body had time to give them. 

The discussion of the ''''projet'^'' as formulated was opened on the 
second day of the session, and it was well stated by the delegate from 
Italy that article 2 mvolved the principal idea which had led to the 
holding of the congress. 

That idea was equal protection to the citizens or subjects of all the 
States of the union with that granted the citizens of their respective 



HEPOBT U. S. DELEGATE TO PARIS CONFERENCE, 1880. 23^ 

States. It sought for purposes of industrial protection the unifica- 
tion of the treaty powers with the qualification that such foreigners 
should comply with the formalities and be subject to the conditions 
imposed upon the citizens by the internal legislation of the country. 
This principle was accepted. But by many of the delegates it was 
thought too narrow in its application, and a long debate arose upon 
the proposition to extend this protective feature to persons who were 
not citizens of either of the treaty States upon the ground that the 
natural rights of inventive genius were equal and no discrimination 
should be made against inventors for the want of citizenship. 

The delegate from Italy stated that the civil code of that country 
granted patentees of every other country equal protection with its own 
citizens independent of reciprocity, and it would not favor a treaty 
less broad. 

After protracted discussion both in committee and in congress, 
article 3 was adopted without a dissenting voice, by which it provided 
that the subjects of States not belonging to the union shall have the 
same rights as the citizens of the contracting States, provided they are 
residents or have their industrial or commercial establishments within 
the territory of one of the States of the union. 

No act of the congress better illustrates the liberal spirit of its 
deliberations than this section. 

The next question presented was whether a patentee in any one State 
of the union should have a priority of right of registration in every 
other State; and if so, for what length of time? 

Such a concession would give to the inventor who should take out 
his patent in any one of the treaty States absolute protection against 
aU rivalry during the specified period within the bounds of the union. 

Great as is the advantage conferred on the diligent inventor by this 
provision, the congress accepted the principle with a reserve of all 
existing rights of third parties as a wholesome stimulus to invention 
and as just in itself. There was a prevailing sentiment in the congress 
that the inventor who increases the happiness or adds to the material 
wealth of nations should be recognized as the world's benefactor, and 
as such be protected and rewarded. 

After full discussion, the time agreed upon within which an inventor, 
having been the first to take out a patent in one of the States of the 
union, might register it in either or all the other, to the exclusion of 
all other discoverers or registrants of the same principle or invention, 
was six months in European States. 

In North and South American States, seven months. (Art. 4.) 

As a further protection the Congress adopted a provision (art. 4, 2d 
par.) that a patent registered in any State of the union should not be 
invalidated by any other registration, by the publication of the inven- 
tion, or by its working by a third party, or the exposure to sale of 
copies of the design or model within said six months of right of priority. 

Article 4 of the original ''''jprojef'' (being art. 6 as finally adopted) 
elicited much discussion. It provided that a patentee might import 
into a country where his patent was granted articles manufactured in 
other States of the union without forfeiture of his patent. 

This involved a radical change of the legislation of some of the 
European States. 

The present law of France forfeits a patent granted by it upon such 
importation. 



238 REVISION OF STATUTES EELATING TO PATENTS, ETC. 

The president of the congress, a delegate of France, pronounced 
such law "barbarous," and stated that it would be abolished. 

The proposition was strenuously opposed by Switzerland upon the 
ground that a manufacturer, having received his patent from that 
country, which imposes light, if any, duty on importation, might estab- 
lish his manufactory in France, where heavy duties on imported articles 
were imposed, and then import his articles into Switzerland and so 
introduce a serious competition with the industry of that country. 
Hungary and Belgium presented modifications of the provision. 

A compromise was finally effected by adding the following qualifica- 
tion to the original provision: 

Nevertheless the patentee shall be under obligation to work his patent (d' exploiter 
son brevet) conformably to the laws of the country into which he has introduced the 
objects patented. (Art. 5.) 

This places the regulation of the working of the patent and the sale 
of the patented objects under the control of the State of the union into 
which the patentee deriving his patent from another State of the 
union has introduced his establishment or his patented objects. 

It was adopted as a measure of defense of some of the free trade 
against the competition of the protection States, as illustrated by 
Minister Kern of Switzerland. 

It was provided by article 11 of the proposed treaty that a tetnpo- 
rary protection should be afforded to patented articles exhibited in the 
international expositions. 

Trade-marks and commercial names occupied a large share of the 
attention of the congress, and the final agreement upon the articles 
relating to them was reached only after long discussion of details. 

The principle of equality adopted as to the patents of invention 
obtains in relation to such marks and names, with the exception that 
the time of priority of right of registration of a trade-mark or com- 
mercial name after registering in the State of first issue is three instead 
of six months in European States and four months in the States of 
North and South America. (Arts. 2 and 4.) The same protection is 
secured temporarily in international expositions. (Art. 11.) 

Articles 6, 7, 8, 9, and 10 refer only to trade-marks and commercial 
names. 

Article 6 provides: 

First. That any trade or commercial mark, duly registered in the 
country of origin, shall be admitted to registry and protected as such 
in every other country of the union. (This makes the law of the coun- 
-try of original registration applicable to it in all other States, and is 
the principle adopted in several international treaties.) (See p. 40 of 
Notes.) 

Second. That the country where the registrant has his principal 
establishment shall be considered the country of origin. 

Third. That if the principal establishment shall not be in one of the 
countries of the union the country of residence of the registrant shall 
be regarded the country of origin. 

Fourth. Registration may be refused if the object for which it is 
asked be regarded contrary to morality and public order. 

The last provision was deemed essential to protect States against the 
abuse of the privilege accorded. 

Article 7 declares that the nature of the product bearing the mark 
or name shall not constitute an obstacle to its registration. It is sub- 



4 



BEPORT U. S. DELEGATE TO PARIS CONFERENCE, 1880. 239 

ject to the condition in the last-named article .vhich refers to the 
object of registration. 

Article 8 provides that the commercial name shall be protected in 
all States of the union, without requirement of registration, whether 
or not it constitutes a part of a trade or commercial mxirk. 

Article 9 is a modification of article 6 in the original '"'' projet^'' and 
was adopted after protracted discussion both in the committee and in 
the congress. 

Article 6 in the original ''^projef^ provided that every article bear- 
ing unlawfully either the mark of trade or an established merchant in 
any country of the union, or an indication of the production of said 
country, shall be prohibited entering into the other contracting States, 
e:s:cluded from transit and bond, and followed by seizure, if there be 
occasion, through process of law. 

Several States insisted upon a modification that would limit action 
against the articles specified in this section to the country into which 
they were imported. 

Switzerland stated that she had spent millions of dollars to perfect 
her railway system, she was a great carrier for other States, and she 
could never consent to the stoppage of such goods in transitu; it would 
be an embargo on commerce. After protracted discussion article 9 
received the assent of the entire congress. 

It provides that such articles so unlawfully marked may be seized 
upon importation into any of the States of the union in which such 
mark or commercial name has a right to legal protection, such seizure 
to be made on request of the public minister or the party interested, 
and that in conformity with the internal legislation of each State. 

This gives free transit to goods bearing false marks to the country 
into which they are imported, and there subjects them to seizure and 
the penalties of the law. 

Article 10 declares that the provisions of article 9 shall be applica- 
ble to every article bearing falsely, as on indication of origin, the 
name of a specific locality, when that indication shall be united to a 
commercial name either fictitious or borrowed with a fraudulent intent. 
The term {^'' emprunte^'') "borrowed," is used for the usurpation of an 
existing commercial name. 

It further provides that every manufacturer or trader engaged in 
the manufacturing or trading in such articles and established in the 
locality falsely indicated as the place of origin shall be regarded an 
interested party. 

Article 11 provides that temporary protection shall be granted to 
patented inventions, designs, models, trade-marks, and commercial 
names of products exhibited at official international expositions or 
officially recognized. 

The principal part of the labor of the congress was expended in 
arriving at the foregoing results. 

After adoption of the articles enunciated relating to patents of in- 
vention, trade and commercial marks and names, the congress took up 
the subject of establishing a central international office for the infor- 
mation of the public in relation to patents of inventions, designs, 
models, and trade-marks. 

Sections 12 and 13 of proposed treaty and paragraph 6 of the pro- 
tocol are devoted to providing for the establishment of such a central 
depot, to be under the charge of the Swiss Government, alread}^ having 



240 EEVISION OF STATUTES EELATING TO PATENTS, ETC. 

in charge the international offices relating to the postal and telegraph 
service, and for the publication of an official journal, all to be at an 
annual expense of not to exceed |6,000, to be borne in equitable pro- 
portions by the treaty States, as provided. 

Provision is made (art. 14) for periodical revisions of the treaty by 
conferences of delegates from the several States. 

Article 15 of the treaty contains a very important provison. It 
declares that the contracting parties, respectively, reserve the right of 
entering separately into treaty or legislative arrangements with other 
States for the protection of industrial property, so far as such arrange- 
ments do not contravene the provisions of the treaty. 

This seems to protect all existing international treaties and to give 
a large freedom for independent treaty relations. 

Such was the object of the provision. 

Article 16 provides that States which have not taken part in the 
congress may, on giving the required notice, come into the union with 
the same rights and relations in all respects as are granted to the treaty 
States. 

Article 17 declares that the reciprocal engagements of the treaty are 
subordinated, whenever necessary, to the revision of the existing for- 
malities and regulations under the laws of the high contracting parties, 
which is to be consummated with the shortest possible delay. 

Article 18 provides that after adhesion of a State the treaty shall 
remain in force as to it an indefinite period, until the expiration of 
one year from the date on which notice of withdrawal shall be made. 

A notice of withdrawal from the union is to be given to the Swiss 
Government, which is charged to receive, diplomatically, notice of 
adhesion. 

The final article, 19, declares that the treaty shall be ratified, and the 
notifications exchanged in Paris within one year, or by November 20, 
1881. 

THE CLOSING PROTOCOL. 

During the discussion upon article 2 of the proposed treaty, the 
delegate from Portugal proposed to broaden the application of the term 
"product" so as to include agricultural stock, etc. 

The idea is embodied in paragraph 1 of the protocol, which declares 
that the words "industrial property" shall be understood in their 
broadest sense and should include agricultural as well as strictly 
industrial products — as wines, fruits, animals, grains, etc. 

Paragraph 2 declares patents of importation and improvement as 
admitted by the legislation of the contracting States to be included 
under the name of patents of invention. 

Paragraph 3 declares that the closing provision of article 2 of the 
treaty or convention shall not be construed as interfering with the 
legislation of the respective States in that which concerns the method 
of procedure before, or the competency of, its tribunals. 

Paragraph 4 was adopted in behalf of the United States, and is in 
the following words: 

The plenipotentiary of the United States of America having stated that by the 
terms of the Federal Constitution the right of legislation upon the subject of trade 
or business marks is to a certain extent reserved to the several States of the union, 
it is provided that the provisions of the treaty shall be applicable only within the 
constitutional powers of the high contracting parties. 



REPOET U. S. DELEGATE TO PARIS CONFERENCE, 1880. 241 

1 will here state all my action in this connection. 

While article 2 of the ''''jprojet^^'' or treaty, was under discussion, I 
proposed, after the words "shall enjoy," to add "within constitutional 
limitations," stating to the congress the peculiar relations of the Fed- 
eral Government, which was of limited powers to the several States, 
and that owing to that feature the question of constitutionality of 
some legislation, especially relating to trade-marks, might be raised. 
The amendment was referred to the committee before which I pre- 
sented the point more fully. The committee accepted the principle 
and recommended that it be embodied in the protocol. 

A few days later I received my instructions from the State Depart- 
ment, advising that, in view of the domestic character of much of 
our legislation, especially that relating to trade-marks, and their Fed- 
eral protection under existing treaties, the Government of the United 
States could not submit such questions to the convention without the 
reservation that its conclusions on those subjects be considered abso- 
lutely subordinated to the provisions of any future legislation of the 
country. 

On the day I received the instructions I proposed, as an additional 
amendment, to add after the words "within constitutional limitations," 
the words "and upon the conditions that shall be imposed by the inte- 
rior legislation of the country." 

At the same time I addressed a note to the president, which he read 
to the congress, of which the following is a translation: 

Mr. President : I did not receive my instructions from my Government mitil thia 
morning, and have had no opportunity to carefully examine them until since the 
meeting of the committee. 

I am instructed to inform the congress that the United States can not agree to sub- 
mit to the convention the question of trade-marks, and marks of commerce and their 
Federal protection under existing treaties without the reservation that the conclusions 
of the convention on those subjects be considered absolutely subordinate to such leg- 
islative provisions as may hereafter be made by the United States. 

My amendment was referred to the standing committee which, while 
expressing a strong desire to meet the views of the United States so far 
as was compatible with the object of the congress, stated that it was 
impossible to grant the power to a member of the Union to pass laws in 
future which would contrave'he the objects of the treaty. 

When it came back into the congress the same view was, with one 
or two individual exceptions, generally expressed. 

I stated to the president that if it was the sense of the congress 
that my amendment was inadmissible, I wished my letter of the day 
preceding to form a part of the proces verbal^ that the reservations 
insisted upon by the United States as the condition upon which it could 
accede to the convention might clearly appear on the records of the 
congress. To this there was general assent. 

It does not appear in the proces verbal of the proceedings of No- 
vember 17. 

The sixth section of the protocol is devoted to settling the details 
of the international office for the protection of industrial property at 
Berne, Switzerland, and the publication of an official journal by it. 

This international bureau was regarded of great consequence by 
most members of the commission; it seeks to centralize information 
and to bring to each of the treaty States knowledge of the progress 
in all its relations of industrial property. 



242 REVISIOIT OF STATUTES RELATING TO PATENTS, ETC. 

It is in fact to be an international "patent office." Its expenses are 
limited to $6,000 per annum, to be borne in equitable proportions as 
provided in the section. 

The official language of said office is to be French. 

The project of treaty and protocol were signed by all the members 
of the congress, but it was with the understanding that the signatures 
carried with them no obligation on the part of any State to accede to 
the convention. 

They but certified the proceedings of the body. 

The dispatch accompanying my instructions suggests that I give my 
own impressions on the general subject. I will say, first, that the 
peculiar relation of the Federal Government to the several States of 
the Union, and the consequent domestic character of much of our legis- 
lation, was appreciated by the congress, and individual members 
expressed to me a desire to so shape its action that the United States 
might be able to give its adhesion to the convention. 

The congress readily adopted my amendment (paragraph 4 of pro- 
tocol) relieving parties to the Union from requirements of the treaty 
which were not within their constitutional powers. This was a conces- 
sion to the United States. 

The reservations relating to the internal legislation of the several 
treaty States were made with the view of meeting some difficulties as 
marked in connection with our own legislation as in that of any other 
country. 

The provision giving any State power to make separate treaties with 
other States was another important concession. 

As to the great central idea of the convention, or treaty, the grant- 
ing equal rights to inventors in all countries of the Union, and the 
exclusive right of registration in all the treaty States of patents of 
invention to the first registrant for a period of seven months to cit- 
izens of American and six months to citizens of European States, I 
have thought no country could derive so large advantage from the con- 
cession as the United States. 

The inventive genius of our people in all the practical arts and indus- 
tries is prominent. 

Its fruits are as widespread as civilization. The rapidity with 
which our inventors give new and important inventions and improve- 
ments to the world is a marvel of the time. And in the very centers 
of European industries their works are in many branches superseding 
native inventions. 

But I am advised that, owing to the want of adequate protection 
abroad, our inventors have not received the inventor's due reward. 
Should the United States see its way clear to give its adhesion to the 
convention, I think no country would be so largely benefited by its 
provisions. 

A patent taken out by one of our citizens, if he be first in the field, 
gives him the command of Europe and America. He has seven months 
of priority of right in which to register his patent in every other of 
the treaty States, and the faith of every State in which he registers 
within that period is pledged to protect his rights. 

It is true that it is a question of balancing losses and gains. ^ An 
inventor in an European State has the same advantage accorded him if 
ne be the first to secure a patent. In other words, it extends the prin- 
ciple of priority which now obtains in every individual State to all 



REPORT U. S. DELEGATE TO ROME CONFERENCE, 1886. 243 

countries within the treaty union, and so makes one great empire of 
industrial property. The just recognition of inventive genius ceases 
to be local, and the inventor, in character as such, becomes a citizen 
of the civilized world. 

It is a recognition of the principle of equality of all men before the 
law in that which concerns tne honors and rewards of inventive genius. 

As a theory I think it sound. 

It will be observed that the United States are expressly exempted 
from obligations to enact any laws or afford any protection to trade- 
marks or any branch of industrial property which are not within its 
constitutional powers. (Par. 4 of protocol.) 

The judgment of the court in the cases decided at the October (1879) 
term of the United States Supreme Court (the United States v. Stef- 
fens, the United States v. Witterman, and the United States v. John- 
son and others) appears, without so deciding, to recognize the power of 
Congress to regulate trade-marks with foreign States, and between 
different States of our own Union. 

But should any legislation seeking so to regulate be unconstitu- 
tional, it is not required of our Government by the treaty stipulations. 

Existing treaties between the United States and any other power 
and future treaties relating to industrial property are declared to be 
within the province of the Government to continue and to make. 
(Art. 15 of treaty.) 

It will be further observed that adhesion to the treaty must be 
given by November 20, 1881, and that any State giving its adhesion 
may withdraw from the union on giving one year's notice to the Gov- 
ernment of the Swiss Confederation. 

From this brief review it will be seen that it is my own judgment 
that inventors of the United States and traders using marks and com- 
mercial names would find advantage in the protective features of the 
proposed treaty; that the unification of an international system secur- 
ing protection and just reward to inventive genius would give a fresh 
stimulus to invention and be an element of pacification between the 
States so associated. 

In submitting the foregoing report I have the honor, sir, to be. 
Very respectfully, your obedient servant, 

James O. Putnam, 
Delegate from the United States, 



Section 3. 



REPORT OF DELEGATE FROM THE UNITED STATES TO THE CONFERENCE HELD 

AT ROME IN 1886. 

Legation of the United States, 
Bome^ Italy ^ June 19^ 1886. (Received July 3.) 
Sir: I have the honor to report that, in obedience to your telegraphic 
instruction of the 9th April, 1886, 1 have attended the International 
Convention for the Protection of Industrial Property, held in Rome 
from the 30th of April to the 11th of May, 1886. I have withheld my 
report up to the present time because I have just come into possession 
of the minutes of the conference, which had to be submitted to its 
several members before it was finally printed. 



244 



REVISION OF STATUTES RELATING TO PATENTS, ETC. 



The conference was attended by representatives of Belgium, Brazil, 
Spain, France, Great Britain, Italy, Norway and Sweden, the Nether- 
lands, Portugal, Servia, Switzerland, and Tunis. 

These countries, with the exception of Great Britain, had become 
members of an International Union for the Protection of Industrial 
Property by virtue of articles of union agreed upon in Paris on March 
20, 1883, Great Britain having acceded to this Union in 1884. The con- 
ference was also attended by representatives of the German Empire, 
Luxembourg, Mexico, Paraguay, Roumania, and Uruguay, and the 
United States of America, all of whom, like myself, appeared solely 
for the purpose of taking note of the proceedings of the conference 
and reporting to their respective Governments. 

The articles of the Union adopted on the 20th of March, 1883, at 
Paris are set forth in the pamphlet which I herewith transmit. The 
objects of the Union are stated in the second of these articles, which 
provides that "the subjects or citizens of each of the contracting 
States shall enjoy in all the other States of the Union, in respect of 
patents, industrial models or designs, trade-marks, and commercial 
names, all the advantages which are actually conferred, or may be con- 
ferred hereafter, upon the subjects or citizens of any of these States 
by their respective laws, so that they shall have the same protection 
and the same legal recourse against all infringements of their rights 
(enjoyed by the subjects or citizens of any State) on condition of their 
compliance with the formalities imposed upon such subjects or citizens 
by the internal legislation of each State;" and in the third article, 
which provides that the same rights and privileges shall be extended to 
the subjects or citizens of States not members of the Union who have 
a domicile or industrial or commercial establishment on the territory 
of one of the States of the union. 

Among^ the other noteworthy articles is article 5, providing "that 
as a condition precedent to the enjoyment of patent rights in any of the 
States of the Union, the owner of the patent must avail himself of it 
(P exploiter) in conformity with the laws of the country into which the 
patented articles are introduced." 

And also article 9, relating to the seizure of manufactured articles 
or articles of commerce bearing fraudulent trade-marks. 

The present conference at Rome was held in compliance with article 
14, which provided that the convention formed at Paris in 1883 should 
be subject to periodical revision, and that the next conference should 
be held in Rome. 

Before the meeting of the conference a number of amendments to 
the original articles were submitted to the members by the represent- 
atives of Belgium, France, Great Britain, and Switzerland. 

Several of these amendments were adopted by the conference, but 
only two of them appear to me to be worthy of note. 

The first of them (an amendment to article 6) is in these words: 

Each country is to determine for itself the sense of the term " exploiter.** 

During the course of the discussion it became evident that the object 
of the French representatives, by whom the amendment was proposed, 
was to limit the enjojnment of patent and trade-mark rights to those 
objects or articles actually manufactured in France, in conformity with 
the construction of the legal phrase "' exploiter ^'^'^ as repeatedly given 



REPORT U. S. DELEGATES TO MADRID, 1890. 245 

by the French tribunals. It is not without significance that England 
voted with France for the adoption of this amendment. 

Another noteworthy amendment is that to article 10, relating to the 
seizure of articles bearing fraudulent trade-marks, and especially the 
latter part of this amendment, which is to the effect that trade-marks 
shall not be considered fraudulent when it appears that they have been 
adopted with the consent of the manufacturer whose name is affixed to 
the manufactured product. 

It is hardly necessary to say that both of these amendments were 
adopted in the interest of "home industries," so called, and, as was 
justly observed by Mr. Monzilli, who strongly protested against these 
amendments in the name of the Italian Government, were in derogation 
of the objects for which the union was formed. 

I do not deem it necessary or proper to make any further cofiaments 
upon the proceedings of the conference, but content myself with the 
observation that any State or country not yet a member of the union 
has the right to join it by simply notifying the Swiss Government, and 
through it the governments of all the other States, of its intention to 
do 60, and that any of the States forming part of the union may with- 
draw from it upon a year's notice. 

I announced to the conference at its first regular session, on April 
30, 1886, that I attended it solely ad referendum, and that I signed the 
minutes upon the express declaration of the president that this signa- 
ture imported nothing more than a certificate of their accuracy. 
I have, etc., 

J. B. Stallo. 



Section 4. 



REPORT OF DELEGATES FROM THE UNITED STATES TO THE CONFERENCE HELD 

AT MADRID IN 1890. 

Sir: The undersigned, appointed by you in pursuance of an act of 
Congress approved March 6, 1890, to represent the United States in 
the' conference of the International Union for the Protection of Indus- 
trial Property, held at Madrid, have the honor to submit the following 
report: 

Mr. Palmer, who was designated by the act as president of the dele- 
gation, being already at his post in Madrid as United States minister 
to Spain, was joined by the other delegates March 30. The opening 
of the conference, fixed for April 1, was postponed until the following 
day, when a preparatory meeting was held, the conference provision- 
ally organized, a series of rules adopted, and adjournment had until 
April 6. The first formal meeting was held April 7, presided over by 
the Marquis de la Vega de Armijo, minister of foreign affairs, assisted 
by the Duke of Veragua, minister of internal affairs (fomento), in 
which the delegates were welcomed on behalf of the Spanish Queen 
and Government, and officers elected. Mr. Moret y Prendergast, 
senior Spanish delegate, was chosen president, and Mr. Puccioni, senior 
Italian delegate, vice-president. 

The following nations were represented in the conference: Belgium, 
Brazil, Spain, the United States, France, Great Britain, Guatemala, 
Italy, The Netherlands, Portugal, Norway, Sweden, Switzerland, and 
Tunis. Delegates were present from the International Bureau at 



246 EEVISION OF STATUTES RELATING TO PATENTS, ETC. 

Berne, and Germany, though not one of the States constituting the 
International Union, was represented by a delegate not voting. At 
least eight of these States were represented by the heads of their 
patent offices. Each State belonging to the International Union was 
entitled to one vote. 

Apart from the preliminary meetings, there were held nine regular 
sessions of the conference. A standing committee for the preparation 
of business also held .its sessions during some part of each day. The 
final session of the conference was held April 14, at which the various 
propositions adopted were attested by the signatures of all the dele- 
gates. 

On the invitation of the King of the Belgians, it was decided to hold 
the next conference (in 1893) in Brussels. 

Four distinct propositions were adopted which the delegation have 
carefully translated and submit with the translations herewith. These 
are: 

First. An arrangement concerning the repression of false indications 
of origin upon merchandise. 

Second. An arrangement concerning the international registration 
of trade-marks. 

Third. A protocol concerning the dotation of the international 
bureau. 

Fourth. A protocol determining the interpretation and application 
of the convention of March 20, 1883. 

The first project, concerning the repression of false indications of 
origin, though presented by the Spanish Government and the inter- 
national bureau, was urgently pressed by the British delegates, being 
in fact the saane as presented by them at Kome in 1886. 

As presented, the first article of the proposition was as follows: 

Every product bearing illegally a false indication of origin, in which one of the 
contracting States, or a place situated in one of them, shall be directly or indirectly 
mentioned as country or place of origin, may be seized on importation into any one of 
the said States. The seizure may also be effected in the State where the false indica- 
tion shall have been applied, or in that which the product bearing the false indication 
shall have been introduced. 

Out of deference to the United States this article was readily modi- 
fied so as to recognize a refusal of entry as the alternative for seizure 
of the goods. But even with this amelioration the delegates of the 
United States regarded the proposition as unjust to both the manufac- 
turer and the merchant, because limiting their dealings with one 
another, and proposed that after the clause " mentioned as country or 
place of origin" should be inserted the phrase "and by which a preju- 
dice shall have been caused to the subjects or citizens of the said State 
or place." This would permit a merchant to mark his goods, of what- 
ever origin, with his own name and place of business, using what the 
French call the commercial mark {marque de commerce). 

Instead of adhering to the equitable rule that interference should 
follow injury, the conference added to the severity of the original 
article by omitting the word "illegally " from the first line, substitutirg 
"indicated" for "mentioned" before the words "as country or place 
of origin," and substituting "shall be" before "seized on importation." 

On motion of the French delegates the third article was added, under 
which the merchant is entitled to put his name and address upon goods 



REPORT U. S. DELEGATES TO MADRID, 1890. 247 

imported; but this is required to be accompanied by the exact indica- 
tion of the country or place of origin in plain characters. 

The principal argument advanced by the British delegates in support 
of the proposition as a whole was the right of the artisans of a locality 
to protection in the reputation acquired by them in the manufacture 
of certain goods. The amendment offered by the United States dele- 
gates was not incompatible with this argument. They held that, so 
far as the protection of its own artisans is concerned, the question is 
one for domestic legislation in each State and not for conventions, and 
that it would be time enough to interpose for the protection of the 
artisans of other nations when an aggrieved party should come forward 
with his complaint. 

The fourth article of this proposition was presented in the following 
form: 

The courts of each country shall have power to decide what are the appellations 
which, by reason of their generic character, avoid the stipulations of the present 
arrangement. 

On motion of Portugal, the following clause was added: 

Provided, however, That regional appellations of origin of vineyard products are not 
included in the reservation fixed by this article. 

The article as adopted, therefore, denies the protection of a court to 
a person against whom the allegation is made that he is using falsely 
a regional appellation upon wine and other products of the vine. It 
can be hardly admitted in this country that a person against whom 
such a charge is made shall be subject to the penalty of having his 
goods refused entry without having an opportunity to meet the accuser 
before a lawful tribunal and try the truth of the charge. In the opin- 
ion of the delegates, if there were no other reason why the United 
States should object to the proposed arrangement, the existence of this 
article in its present form makes it wholly unacceptable. 

After the defeat of their amendment to the first article the United 
States delegates abstained from voting further upon this proposition. 
The Portuguese amendment was actually adopted by a vote of only six 
States against five adverse and three not voting. On the final vote 
upon the proposition as a whole it received seven votes — less than a 
majority of the States represented. Under these circumstances it can 
scarcely be regarded as embodying the sentiment of the conference. 

The second proposition adopted by the conference provides a system 
for the international registration of trade marks. The United States 
delegates were prepared to assent to the general principle of such reg- 
istration, but, as it had not been considered in their instructions and 
was in the form of a separate convention, they were not prepared to 
vote upon the proposition. It is apparent also that the adoption of 
the project by this country will involve considerable legislation to 
carry it into effect. 

The project involves the establishment of a subordinate union of 
those States that see fit to accede to it; and, although its ratification is 
contemplated within a limited period, the way is left open for the sub- 
sequent adherence of States which for the present decline it. In the 
judgment of the delegation the United States should abstain from join- 
ing the projected union at the present time. 

The third project relates to the dotation of the International Bureau 
for the Protection of Industrial Property at Berne. 
S. Doc. 20 IT* 



248 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

As provided in the sixth paragraph of the final protocol annexed to 
the convention of March 20, 1883, the expenses of the bureau are sup- 
ported in common by the contracting States, but, until further provided, 
can not exceed 30,000 francs per annum, of which the share of the United 
States is a little less than $800. The Swiss Government has found 
the sum insufficient to enable it to organize and maintain the bureau 
in a suitable manner; and, while not proposing immediately to increase 
its expenses, has desired that the maximum allowance might be 
increased to 60,000 francs. In the form in which it was presented the 
proposition met with some objections, but all the delegations were 
agreed that the increased dotation was desirable. The effect of adop- 
tion of the project by the United States will be to make our maximum 
contributory share for the support of the bureau $1,600. If the 
convention gives us any advantage at all, there can be, in the judg- 
ment of the delegation, no reasonable objection to this annual 
expenditure. 

The fourth project is a protocol to determine the interpretation and 
application of some parts of the original convention. Its provisions 
will be briefly noticed. 

I, Assimilation of aliens. — ^To provide against citizens of noncon- 
tracting States deriving advantage from the convention by virtue of 
establishing an insignificant business house or mere agency within one 
of the contracting States, it is determined that such advantage can 
only be claimed by a person who has his principal establishment in 
one of the States of the Union. 

//. Countries heyond the sea are more distinctively defined relative to 
Europe. 

III. Beci^procal independence of patents. — This paragraph provides 
that patents granted an inventor for the same invention in different 
countries shall be independent of one another. This is in harmony 
with the best sentiment in the United States on the subject and with 
bills pending before Congress, though not with the existing statute. 
(Sec. 4887, R. S.) The delegation found themselves authorized by 
their instructions to support it. 

/ V. Interpretation of the word exploiter. — Many Governments require 
the "working" of a patent to keep it from forfeiture, but there is a 
wide difference among them as to what shall constitute working. Par- 
ticularly is the law of France on this subject very burdensome to the 
American patentee, since it demands that the article protected by 
patent shall be actually manufactured in France, and even makes 
importation of the article from abroad, except under certain very nar- 
row conditions, a cause for forfeiture. These requirements actually 
render the French patent valueless to an alien in cases where an expen- 
sive plant is necessary to carry on the manufacture, and if similar 
requirements were made in all countries would wholly destroy the 
value of the Union. The American delegates felt themselves bound by 
their instructions (as well as by their own convictions) to oppose this 
proposition. They submitted a counter proposition to the effect that 
the patentee who works his invention in one country of the Union shall 
not be held to have forfeited his rights in another by reason of not 
working it there. This proposition, pronounced by a Belgian delegate 
to "approach the ideal in respect to industrial property," was, never- 
theless, rejected, and the original proposition adopted by a vote of 8 



REPORT U. S. DELEGATES TO MADRID, 1890. 249 

to 6, Great Britain, Italy, Norway, and Sweden voting with the United 
States, and one not voting. 

V. Trade marks. — This paragraph authorizes the protection of 
municipal and collective trade marks in the same way as those of 
individuals. There is no doubt of the equity of this provision, 
but its strict enforcement in the United States will require some modi- 
fication of the existing law, and a new definition by the courts of the 
term trade mark, since as now interpreted here and in Great Britain 
it does not include the class of marks indicated. Apart from statu- 
tory provisions, the Federal and State courts recognize these marks as 
entitled to protection. It is believed that a bill now pending before 
the House of Representatives (H. R. 3812) will, if enacted, substan- 
tially provide for their registration. 

The second clause of this paragraph asserts what is believed to be 
the established common law doctrine upon the subject to which it 
relates. 

VI. International expositioTis. — ^This paragraph is intended to make 
more explicit the provisions of Article XI of the convention, for the 
temporary protection of unpatented inventions exhibited at interna- 
tional expositions. Such exhibition in most countries will vitiate a 
patent subsequently obtained. In this country it has no such effect, if 
patent is applied for within two years, and Article II allows a period 
of six months for that purpose in all the countries of the Union. 

The new provisions prescribe more particularly the conditions of 
this privilege and make this period of temporary protection additional 
to the period of priority provided by Article I V of the convention. 
Some advantage is assured by these provisions to American citizens 
who desire to exhibit their inventions in international expositions 
before patenting them abroad. Certain formalities are to be complied 
with, as set forth in the fourth clause; and should this protocol be 
ratified this matter may be of immediate importance in view of the 
coming Chicago exposition. 

Paragraphs VII, VIII, IX, X, and XI relate merely to matters of 
administration, and but for the inclusion of them in the protocol would 
not seem to demand ratification. No reason is seen why they should 
not be perfectly acceptable to all concerned. In some particulars they 
enhance the utility of the Union, since they provide means by which 
each State may be promptly informed of changes in legislation in any 
of the others in respect to industrial property, — sometimes a matter 
of great importance. 

These four drafts of propositions, of which the eleven paragraphs 
of the protocol constitute one, are submitted to the several States 
forming the International Union for their acceptance. Should it seem 
advisable for the United States to accept any of the four, it is under- 
stood that such propositions should be signed by a plenipotentiary at 
Madrid, at a date not fixed, but within six months from April 4, 1890, 
after which they shall be subject to ratification within another six 
months at the latest. 

Except the third proposition, for the dotation of the International 
Bureau at Berne, the delegation can not recommend for approval by 
their Government any of the propositions adopted by the conference. 
Many paragraphs of the fourth proposition are unobjectionable, but it 
can only be ratified as a whole. This delegation represented to the 



250 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

conference the difficulty that might arise from this fact, and urged 
that each paragraph should be presented in a separate protocol, but 
the conference preferred to adopt it as a single instrument. 

RESOLUTIONS ADOPTED BY THE CONFERENCE. 

The conference found itself embarrassed by the presentation of mat- 
ters for its consideration upon which, by reason of their being formu- 
lated so late that the several Governments had not been able to consider 
them fully, the delegates were uninstructed. To avoid this difficulty 
in the next conference, the United States offered a resolution, which 
with some slight modifications was adopted, expressing the desire that 
all propositions to modify the convention or to create separate arrange- 
ments should be presented to the International Bureau at least six 
months before the opening of the conference, and immediately com- 
municated to the different powers. 

In addition to the projects and resolution adopted by the conference, 
the delegates desire to submit their report as to other propositions 
which they were instructed to support, but which were rejected by 
the conference. 

PROPOSITIONS OF UNITED STATES WHICH AVERE REJECTED. 

The leading purpose of the representatives of the United States was 
to secure a modification of the convention in respect to the " period of 
priority " instituted by Article IV. For reasons often reiterated and 
so well understood that they need not be repeated here, this period as 
it exists is practically without value to the United States; and, since 
it is on this that the value of the convention principally depends, the 
importance of having it adapted to the conditions of our law is appar- 
ent. The period of priority provided by the convention is six months 
from the deposit of the application. And the proposition of the 
United States was that it should be made to run from the official pub- 
lication of the specification rather than from the deposit. This appeared 
to be a common ground on which all the contracting States might unite, 
with material advantage to those in which the patent is granted after 
preliminary examination, pending which the invention is kept secret, 
while not injurious to those in which publication occurs immediately 
after deposit and as a consequence thereof. In either case it assimi- 
lates the beginning of the period of priority to the date from which 
the patent begins to run. It is a strictly logical proposition. A patent 
is vitiated in most countries by reason of a prior publication in another 
country; and the deposit of an application in one country, unless accom- 
panied or followed by publication, does not vitiate a patent subse- 
quently granted in another. It seems only reasonable that any period 
of priority, whether long or short, should date from the act which in 
itself will vitiate the patent subsequently obtained abroad, rather than 
from an act which in itself has no such effect. And, while the propo- 
sition seemed thus reasonable in respect to the other countries of the 
Union, it appeared to the delegation to be a particularly favorable one 
f ol* British inventors, since under their law publication does not follow 
deposit for many months. 

It was quickly apparent that neither the logical consistency of a 
proposition of this character nor its adaptation to existing legal condi- 



KEPORT U. S. DELEGATES TO MADRID, 1890. 251 

tions in certain countries, nor the fact that the present treaty arrange- 
ment is practically useless to the United States, could have any weight 
in the conference. The proposition was met by four objections: That 
any extension of the existing period of priority could not be permitted, 
as it was already a great embarrassment and damage to the patentee, — 
easily answered by the remark that no such extension was desired, but 
only an adjustment of the date from which it should run; second, that 
by a resolution of the conference at Rome in 1886 it was agreed that 
the terms of the existing convention should not be changed, — to this it 
was answered that it was not in the power of the conference of Rome 
to bind subsequent conferences by a resolution, while by the terms of 
the convention provision was made for its amendment and modification; 
third, patent laws in different countries had been amended to conform 
to the conditions of the convention, and a change in it would necessitate 
further legislation by parliaments upon matters which were regarded 
as settled. This objection is hard to answer; but it could be said with 
respect to some countries, as Great Britain, that the proposition 
appeared to be advantageous to her people, and Parliament would prob- 
ably not be reluctant to legislate in favor of British interests. 

The fourth objection was the most serious, and might be thus stated: 
At the original conference in 1880 there was a very earnest effort to 
find a common ground upon which all the contracting parties could 
stand in respect to this period of priority, and the present arrange- 
ment was reached as the best that could be agreed upon, though not 
in all respects satisfactory. Some other arrangement might have been 
agreed upon if presented, but the United States had no proposition to 
offer. There is no reason to believe that the present proposition of 
the United States might have been as acceptable as that which was 
adopted. The delegates went to their homes, some of them exerting 
themselves to have their patent laws amended to agree with the terms 
of the convention, and some countries not ratifying the convention 
until their laws were thus changed. Ten years later the United States, 
having ratified the convention and acceded to the Union without the 
formality of modifying her laws to harmonize with it, comes to the 
conference and demands that out of deference to her unique law an 
arrangement shall be altered against which her delegates made no pro- 
test when adopted, and which she, after seven years' delay, had solemnly 
ratified. It is too late. 

The United States delegates found themselves embarrassed by this 
objection. They could not deny that they were asking to modify an 
arrangement formulated in 1880, and to which not only was no objec- 
tion made on the part of their Government at the time, but in which 
it was presumed their Government acquiesced by virtue of its ratifica- 
tion of the convention of 1887. The objection seemed to them reason- 
able from the point of view of nations to which the present arrangement 
is satisfactory, and is not easily met. 

The British delegates were, moreover, instructed that they were to 
consent to no project that was not in agreement with existing British 
law; and in view of the general consensus that by virtue of the reso- 
lution taken at Rome there could be no modification of the existing 
convention, it was useless to seek for a ground of compromise. The 
Swiss delegates were ready to accept the United States proposition, so 
far as their Government was concerned, but offered the following sub- 
stitute, which they thought more likely to meet the views of the con- 



252 REVISION OF STATUTES RELATING TO PATENTS, ETC. 



ference, and which the United States delegates thought best to accept 
in lieu of their own: 

In that which concerns patents, every State has the right to determine that for 
patents first applied for in it, the period of priority shall only run from the time 
when the description of the invention has been officially rendered public. 

SEIZURE. 

The proposition was, however, rejected, the Netherlands, Norway, 
Sweden, and Switzerland voting with the United States, against 8 votes 
adverse and 1 not voting. 

The delegates were instructed to support an amendment to Article 
X of the convention, whereby an illicit trade-mark on imported mer- 
chandise should subject it to refusal of entry instead of to seizure, as 
contemplated in the terms of that article. The conference took no 
action on that proposition, but a declaration was made by one of its 
members to the effect that in the conference at Kome it had been 
agreed that seizure was not obligatory, but was only applicable within 
the limits authorized by the legislation of each State. On the demand 
of one of the United States delegates to know if there was any dissent 
from this view among the members of the present conference, it 
appeared there was none. The delegation therefore regard the object 
of the proposed amendment as substantially accomplished, and that the 
United States will acquit herself of her obligations under the con- 
vention whenever her laws provide for the refusal of entry of mer- 
chandise bearing false indications of origin. A serious obstacle to 
legislation in this country in the direction of fulfilling treaty obliga- 
tions is thereby removed. 

It perhaps should be remarked that in a conference of this character 
the tJnited States is at a little disadvantage, by reason of the extreme 
liberality of her patent laws toward foreigners. The disposition was 
occasionally manifested among the delegates to ask concessions of 
some kind in return for their support of any particular proposition. 
But, since the patent laws of the United States already place aliens 
on the same footing as citizens in all respects, no concessions could be 
made. This liberality has been in accordance with settled policy and 
is perhaps on the whole advantageous, but in making international 
arrangements it seems unfortunate that we had not reserved some- 
thing which would enable us by timely concessions to secure for our 
citizens reciprocal advantages in other countries. 

If it should be thought that the errand of the delegation was futile 
in view of the barrenness in immediate practical results of the Madrid 
Conference, the delegates are of different opinion, since they believe 
that the foundations have been laid — and intimations to that effect 
were not lacking — for future special conventions with one or more 
European States upon matters of industrial property, which shall be 
more advantageous to the United States than the convention of 1883. 

It may be questioned whether it was wise on the part of our Gov- 
ernment to enter the international Union without first ascertaining 
that the convention was consistent with our laws and advantageous to 
our citizens, and there may be a disposition to withdraw from it. 
The delegates are not prepared to advise such action at present. 
They are sensible of the value which attaches to membership in such 
a union and to a voice in its conferences; and in their judgment it 



I 



A. 



REPORT U. S. DELEGATES TO MADRID, 1890. 253 

would be better to adhere to it, to urge upon Congress such consti- 
tutional legislation as our obligations to it require, and to appear at 
Brussels in 1893, renewing our propositions or presenting such others 
as the conditions at that time may dictate, with the hope that they 
may have a more favorable reception. 

There has been no legislation in the United States since ratification 
of the convention with the object of carrying out its provisions. The 
patent laws were enacted in substantially their present form in 1870 
and the trade-mark law in 1881. The United States adhered to the 
Union m 1887. Existing statutes make no provision for reciprocity 
and no advantage is given by them to citizens of the States of the 
international Union over those enjoyed by citizens of States not mem- 
bers of it. Neither does any pending bill before either House of 
Congress propose legislation in accordance with the convention. On 
the contrary, there is danger of laws being enacted that are at vari- 
ance with it. Under the circumstances it would be expedient if a 
commission could be appointed to revise the patent and trade-mark 
laws, in view of our international relations, in the interest of a wider 
market for the inventions of our citizens and of a more ample protec- 
tion for their good name as manufacturers and merchants, evidenced 
by their trade-marks and commercial names. 

The delegates can not conclude this report without expressing their 
appreciation of the courtesies extended to them by the Spanish Gov- 
ernment. All public institutions interesting to the traveler, art gal- 
leries, museums, armories, and both halls of the Cortes were thrown 
open to them. Tickets entitling them to free transportation on all the 
railways leading out of Madrid were freely given to all the delegates 
and to the members of their families whenever they were so accom- 
panied. They were entertained by the Minister de Fomento, and a 
special reception in their honor was given by the Queen Regent at the 
Royal Palace. Nothing was left undone to add dignity and splendor 
to this occasion, the memory of which will be perpetual testimony to 
the cordial welcome given by Spain to those who accepted her invi- 
tation to the International Conference of 1890. 
We have the honor to be, very respectfully, your obedient servants, 

T. W. Palmer. 
F. A. Seely. 
Francis Forbes. 
Hon. James G. Blaine, 

Secretary of State, 



Chapter IX. 

CONVENTIONS AND TREATIES RELATING TO PATENTS AND 
TRADEMARKS BETWEEN FOREIGN COUNTRIES. 



Section 1. 



CONVENTION OF MONTEVIDEO (BETWEEN SOUTH AMERICAN COUNTRIES) CON- 
CERNING PATENTS.! 

[January 16, 1889. La Propri6t6 Industrielle, 1898, Ann6e 14, p. 118.] 

His Excellency the President of the Argentine Republic; 
His Excellency the President of the Republic of Bolivia; 
His Majesty the Enrperor of Brazil; 
His Excellency the President of the Republic of Chili; 
His Excellency the President of the Republic of Paraguay; 
His Excellency the President of the Republic of Peru; and 
His Excellency the President of the Republic to the east of the 
Uruguay, 

EEPRESENTED BY 



Who, having exhibited their full powers, have been recognized in 
good and due torm, and have taken part in the conferences and neces- 
sary discussions, are agreed upon the following provisions: 

Article 1. Any person who shall have obtained a patent or privi- 
lege of invention in one of the subscribing States shall enjoy, in the 
other States, the rights of inventor, if, within the maximum delay of 
one year, he has registered his patent according to the manner deter- 
mined by the laws of the country where he demands recognition of 
these rights. 

Art. 2. The privilege shall hold the number of years fixed by the 
laws of the country wnere it is desired to put it in force. This term 
may, however, be reduced to that fixed by the laws of the State where 
the patent has been originally granted if it be of less duration. 

Art. 3. Contests raised in what concerns the priority of invention 
shall be decided according to the date where the respective patents 
have been demanded in the countries which have granted them. 

Art. 4. The following are considered as constituting an invention 
or a discovery; A new process, a mechanical or manual apparatus 
used for the manufacture of industrial products; the discovery of a 
new industrial product, and the application of improved means aiming 
to obtain results superior to those which are already known. 

The following can not be made patentable; 

1. Inventions and discoveries which shall have been made public in 
one of the subscribing States, or in other States not connected with 
the present convention. 

^According to our information this convention will be in force between the Argen- 
tine Republic, Paraguay, Peru, and Uruguay. 
254 



CONVENTIONS AND TREATIES. 255 

2. Those which may be contrary to morality and to the laws of the 
countries where the patents should be delivered or recognized. 

Art. 6. The right of the inventor comprehends the power to derive 
profit from his invention and to transfer it to others. 

Art. 6. Civil and criminal infringements committed by those who 
shall have violated the right of the inventor shall be prosecuted and 
punished according to the laws of the country where the wrong shall 
have been done. 

Art. 7. For entrance into force of the present convention, it is not 
necessary that it shall have been ratified simultaneously by all the sub- 
scribing States. The one which shall have approved it shall give 
information of it to the governments of the Argentine Republic and 
the republic to the east of the Uruguay, in order that they give infor- 
mation of it to the other contracting States. This notification will take 
the place of exchange of ratifications. 

Art. 8. The exchange of ratifications having once taken place, in the 
manner indicated by the preceeding article, the present convention 
shall enter into force from this moment for an indefinite duration. 

Art. 9. If one of the subscribing States judge it advisable to with- 
draw from the convention, or to introduce modifications, it shall make 
it known to the other States; but it shall be released only after the 
expiration of two years after the notice, during which delay a new 
understanding shall be sought for. 

Art. 10. Article 7 may be extended to those of the States not hav- 
ing taken part in the congress which desire to agree to the present 
treaty. 

In testimony of which, etc. 

(Signatures.) 



Section 2. 



CONVENTION OF MONTEVIDEO (BETWEEN SOUTH AMERICAN COUNTRIES) CON- 
CERNING TRADEMARKS. 1 

[January 16, 1889.] 

His Excellency the President of the Argentine Republic; 
His Excellencv the President of the Republic of Bolivia; 
His Majesty the Emperor of Brazil; 
His Excellency the President of the Republic of Chile; 
His Excellency the President of the Republic of Paraguay; 
His Excellency the President of the Republic of Peru; and 
His Excellency the President of the Republic to the east of the 
Uruguay. 

REPRESENTED BY 



Who have exhibited their full powers, have been recognized in good 
and due form, and have taken part in the conferences and necessary 
discussions, are agreed upon the following provisions: 

Article 1. Any person to whom the right to the exclusive use of a 
trade-mark shall have been granted in»one of the subscribing States 

_ ' According to our information this convention will be in force between the Argen- 
tine Republic, Paraguay, Peru, and Uruguay. 



256 REVISION OF STATUTES RELATIlSra TO PATENTS, ETC 



shall enjoy the same privilege in the other States, in consideration of 
the observation of the formalities and conditions established by their 
laws. 

Art. 2. The property of a trade-mark comprehends the power to 
put it in use, to transfer it, or to alienate it. 

Art. 3. A trade-mark is considered as such when it is the sign, 
emblem, or external name which the merchant or manufacturer adopts 
or affixes to his merchandise and products, in order to distinguish them 
from those of other workmen or merchants who deal in articles of the 
same kind. 

There belong also to marks of this kind those so-called designs of 
fabric or labor es ^ which, by weaving or printing, are applied to the 
same product which is put on sale. 

Art. 4. Counterfeits and falsifications of trade-marks shall be pros- 
ecuted before the courts, conformable to the laws of the State upon 
the territory wherein the fraud has been committed. 

Art. 5. For entrance into force of the present convention it is not 
necessarj^ that it shall have been ratified simultaneously by all the 
subscribing States. The one which shall have approved it shall give 
information of it to the Governments of the Argentine Republic and 
the Republic to the east of the Uruguay, in order that they give infor- 
mation of it to the other contracting States. This notification will take 
the place of exchange of ratifications. 

Art. 6. The exchange of ratifications having once taken place in a 
manner indicated in the preceding article, the present convention shall 
enter into force from this moment for an indefinite duration. 

Art. 7. If one of the subscribing States judge it advisable to with- 
draw from the convention or to introduce modifications, it shall make 
it known to the other States; but it shall be released only upon the 
expiration of two years after the notice, during which delay a new 
understanding shall be sought for. 

Art. 8. Article 6 may be extended to those of the States which desire 
to agree to the present treaty. 

In testimony of which, etc. 

(Signatures.) 

Section 3. 

convention concluded december 6, 1891, between germany and austria- 
HUNGARY, CONCERNING INDUSTRIAL PROPERTY. 

FTranslated and condensed for this report by Mr. Greeley from La Propri6t6 Industrielle, January 1, 
*■ 1892, p. 1.] 

Germany and Austria-Hungary concluded on December 6, 1891, a 
convention for the reciprocal protection of industrial property which 
is of great interest. Up to the present time this matter has been 
regulated between the two countries by article 20 of the commercial 
treaty of May 23, 1881, by which the parties agreed in the matter of 
trademarks to accord to the foreigner the same treatment as accorded 
to subjects, and in the matter of patents not to consider official pub- 
lications as printed publications negativing the novelty of an invention 
until three months after publication. 

* Like signification ; this term is used principally for textile products. 



CONVENTIOI^S AND TREATIES. 257 

The first article of this convention assures to applicants in one of 
the countries the same treatment within the territory of the other 
which is accorded to subjects of that country in the matter of inven- 
tions, designs, and industrial models, trademarks, and the commercial 
name. The benefits of these provisions are extended by article 2 to 
subjects or citizens of other States who are domiciled in or have their 
principal establishment within the territory of one of the contracting 
States. These two articles are substantially the same as articles 2 and 
3 of the International Convention of 1883. 

Articles 3 and 4 provide for delays of priority analogous to those of 
the International Convention, but difier in regard to the date at which 
the delay of priority begins, according to the nature of the subject- 
matter to be protected. These articles are as follows: 

Art. 3. Whenever an invention, a design or model, or a trade-mark is made the 
subject of an appHcation for protection in the territory of one of the contracting 
parties, and, within a delay of three months, the application is also made in the 
territory of the other contracting party: 

(a) This second application shall have priority over all others which may have 
been filed in the territory of the other party subsequent to the date of the first appli- 
cation. 

(6) Circumstances arising subsequent to the date of the first application shall not 
negative the novelty of this application in the territory of the other party. 

Art. 4. The delay of priority provided for in the preceding section begins: 

(a) In case of designs and models and trade-marks at the moment of the filing of 
the first application. 

(6) In case of inventions, at the moment of the grant of the patent on the first 
application. 

(c) In case of objects which are applied for in Germany as models of utility 
(Gebrauchmuster) and in Austria-Hungary as patentable inventions, at the moment 
of the filing of the application, if the latter is filed in Germany, and at the moment 
of the grant of the patent on the first application if the latter is filed in Austria- 
Hungary. 

The day of filing or of the grant is not included in this delay of priority. The 
day on which notice is given of the decision concerning the definite grant of the 
patent is considered the date of the grant. 

Article 5 provides that the introduction into the territory of one of 
the parties of a product manufactured in the territory oi the other 
shall not work the forfeiture of the protection granted to an invention, 
a design, or model applicable to such product. This is almost the same 
as the first paragraph of article 5 of the International Convention of 
1883. 

Article 6 gives effect to the principle established by article 6 of the 
International Convention under which registration for a mark already 
registered in the territory of one of the parties can not be refused in 
the territory of the other for the reason that its composition and form 
do not satisfy the requirements of the local law. This is a great 
advance on the system established by the former commercial treaty 
under which each country treated the marks of the other according to 
its own law and could thus refuse protection to foreign marks of great 
value, thus encouraging unfair competition. 

Article 7 of this convention protects the rights of interested parties 
in Austria by providing that trademarks known in the territory of 
one of the parties as the distinctive marks used by members of an 
industrial association or the inha^bitants of a locality or specified dis- 
trict can not be used as "free marks," if they have been deposited in 
the territory of the other party before October 1, 1875. This date is, 



258 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

in Germany, the latest date permitted for the deposit of marks in use 
before the law in respect thereto went into effect. 

The provisions relative to the suppression of false indications of 
origin (article 8) go further than those of article 10 of the Interna- 
tional Convention of 1883. They apply to indications of origin of all 
kinds, as provided for in the first protocol of the conference at Madrid, 
which took effect as to a certain number of the States of the Union 
within the following year. 



Section 4. 



CONVENTIONS CONCLUDED BETWEEN GERMANY AND ITALY AND GERMANY 
AND SWITZERLAND CONCERNING INDUSTRIAL PROPERTY. 

[Translated and condensed for this report by Mr. Greeley from La Propri6t6 Industrielle, May 1,1892, 

p. 65.] 

Germany has concluded with Italy, under date of January 18, 1892, 
and with Switzerland, under date of April 13, 1892, conventions which 
rest, as a precedent, on the principles which are the basis of the Inter- 
national Convention of 1883, but differing in some particulars from 
that Convention. 

The first two articles of these conventions, which assimilate to sub- 
jects or citizens of each State the subjects or citizens of the other 
contracting State and other persons who are domiciled or located in 
the territory of the latter, are equivalent to articles 2 and 3 of the 
International Convention, with this difference, that in order to be 
entitled to these benefits the foreigner not domiciled must have his 
principal establishment in one of the two countries. 

In the convention between Germany and Italy the provisions respect- 
ing the effect of the delay of priority are the same as in the convention 
between Germany and Austria. 

This is as follows: 

Art. 3. The application, on the territory of one of the contracting parties, for pro- 
tection for an invention, a design or model, or a trademark shall have, if it is followed 
within the period of delay hereinafter indicated by a like application in the territory 
of the other party, the following effects: 

(a) The latter application shall have priority over all other applications filed in the 
territory of the other contracting party subsequent to the filing of the first application. 

(6) The novelty of the subject-matter to which the first application relates shall 
not be negatived by facts arising subsequently to the latter in the territory of the 
other contracting party. 

The corresponding article of the convention with Switzerland is as 
follows: 

Art. 3. Whenever an application for an invention, a design or model, or a trade- 
mark is filed in the territory of one of the contracting parties, and, within a period 
of three months thereafter, aj)plication is made in the territory of the other, the latter 
shall have the same effect as if it had been filed at the date of the former. 

The provision by which the date of beginning of the delay of priority 
is determined is in the following terms in the convention with Italy: 

Art. 4. The delay of priority provided for in article 3 begins: 

(a) In case of designs and models and trademarks at the moment of the filing of 
the first application. 

{b) In case of inventions at the moment of the grant of the patent on the first 
application. 



CONVENTIONS AND TREATIES. 259 

(c) In case of objects which are applied for in Germany as models of utility 
(Gebrauchmuster) and in Italy as patentable inventions, at the moment of the filing 
Df the first application, if the latter is filed in Germany; at the moment of the grant 
of the patent on the first application if the latter is filed in Italy. 

The day of filing or of the grant is not included in the delay of priority. 

The day on which notice is given of the decision concerning the] definite grant of 
the patent is considered the date of the grant. 

In the convention with Switzerland the last paragraph has been 
slightly modified in view of the fact that in Switzerland the patentee 
does not receive, as in Germany, an official notification concerning the 
grant of the patent. 

The uncertainty as to the meaning of article 4 of the convention with 
Italy, so far as it concerns the beginning of the delay of priority in 
case of patents for inventions, is explained in the convention with 
Switzerland by inserting in the final protocol the following statement, 
from which it appears that the right of priority begins at the date of 
the filing of the application and terminates three months after the date 
of the above-mentioned declaration: 

In construing paragraph 1 it is to be understood that an application may be made 
in the territory of the other party with the effect provided for in article 3 before the 
moment of the grant of the patent on the first application, on condition that the pat- 
ent is thereafter actually granted. 

In these conventions with Germany the right of priority, so far as 
concerns applications for patent, is much longer than that established 
by article 4 of the International Convention of 1883, especially as to 
applications filed in Germany. In that country the application for 
patent is followed by a preliminary examination of indetermmate 
length, after which the application is open for two months for opposi- 
tion, which is in its turn followed b}^ a procedure more or less long if 
opposition is made. It will be understood that the greater part of a 
year is consumed between the filing of the application and the notice 
to the interested party that his patent may be granted. 

The following provision, one of the most important of the conven- 
tions with Italy and Switzerland, is not found in the convention with 
Austria. It concerns the arrangement by which the contracting States 
avoid, in the interest of their several applicants, the forfeiture for non- 
working. The following is this provision as it appears in the convention 
with Italy: 

Art. 5. The prejudices which, under the laws of the contracting parties, result 
from the fact that the invention has not been worked or the design or model has not 
been reproduced within a certain period shall not have effect if working or repro- 
duction takes place in the territory of the other contracting party. 

In consequence, the importation into the territory of one of the contracting parties 
of a product manufactured in the territory of the other party shall not cause in the 
other the forfeiture of the protection accorded by law to said product as an invention, 
design, or model. 

In the convention with Switzerland this second paragraph appears 
in the following form: 

The importation into the territory of one of the contracting parties of a product 
manufactured in the territory of the other shall not cause, in the other, any prejudice 
to the legal protection based on an invention, a design, or model, or a trade-mark. 

In spite of a slight difference of form, this provision is identical in 
its effects with that of the convention with Italy. It is to be noted 
that it does not annul the cause of forfeiture established by the Swiss 
law (art. 9 [4]) in case the object patented is imported from abroad and 



260 REVISION OF STATUTES RELATUSTG TO PATENTS, ETC. 

at the same time the owner of the patent refuses a demand for license 
in Switzerland on equitable terms. This results from the following 
statement inserted in the final protocol: 

The prejudices which, under the laws of the contracting parties, result from the 
refusal to grant licenses are not avoided by the provisions of article 5. 

The suppression of forfeiture for nonworking is a great advance on 
the present condition of affairs. This has always been regarded as a 
result to be secured som^ time; but it has not been thought possible 
that at this date there would be found three States disposed to make 
this reciprocal concession, nor above all that the initiative would be 
taken by a country not belonging to the International Union. 

In the matter of trade-marks these two conventions have an identical 
provision, which is equivalent to those in force in the Union on the 
same subject, but more concisely put. This is as follows: 

Art. 6. Kegistration of a trade-mark registered in one of the contracting parties 
can not be refused to the owner of the mark in the territory of the other party, for 
the reason that the mark does not satisfy the requirements in force in the latter in 
so far as concerns the composition and configuration of the mark. 

The convention with Italy contains also the following provision, 
which is not found in the convention with Switzerland: 

Art. 7. Trademarks which belong to the public in the country of origin can not be 
made the subject of an exclusive right in the territory of the other party. 

The convention with Italy does not contain any provision concern- 
ing the suppression of false indications of origin. That with Switzer- 
land, on the contrary, regulates this matter by the following article: 

Art. 8. Each of the contracting parties shall enact, unless such provisions are 
already in force, provisions against the sale and the placing on sale of products 
which, falsely and for the purpose of fraud, are marked as products of a locality or 
district situated in the territory of one of the contracting parties. 



Section 5. 

CONVENTION BETWEEN SWITZERLAND AND RUSSIA CONCERNING TRADEMARKS. 

[May 1-April 19, 1899.] 

Article 1. The citizens and subjects of the two high contracting 
parties shall enjoy in the States of the other the same protection as 
the citizens in all that which concerns trademark property, under the 
condition of fulfilling the formalities prescribed on this subject by the 
respective laws of the two States. 

In each case it is permitted, in Switzerland to Russian subjects and 
in Eussia to Swiss citizens, to lawfully register their marks, in the form 
in which they have been admitted in the country of origin; provided, 
that they are not contrary to morals or to public order. 

Art. 2. The registration in Switzerland of a Russian mark and in 
Russia of a Swiss mark can be refused according to the provisions of 
the legislation of the respective countries if the mark is not suffi- 
ciently distinguished from another mark previously registered. 

Citizens and subjects of the two States can not enjoy in the other 
the protection of their marks to a larger extent nor for a longer period 
than they enjoy in their own country. 



CONVENTIONS AND TREATIES. 261 

Art. 3. The deposit of marks shall take place in Switzerland at the 
federal office of intellectual property at Berne, and in Russia at the 
department of commerce and of manufacture at St. Petersburg. 

The papers of the application should be written or translated into 
the French, German, or Italian language for Switzerland, and into the 
Russian language for Russia. 

Art. 4. The present Convention shall be ratified and the ratifications 
exchanged at Berne as soon as possible. 

This convention shall enter into force from the date of the exchange 
of ratifications, and shall remain in force until the expiration of one 
year from the date when the denunciation shall have been made by one 
of the contracting parties. 

In faith of which the respectis^e plenipotentaries have signed the 
present convention and affixed their seals thereto. 

Done in duplicate the May 1— April 19, 1899. 

[l. s.] Brenner. 

[l. s.] a. de Yonine. 

Note. — The above Convention was approved by the Federal Chamber under date of 
June 17-24, 1899. The exchange of ratifications took place at Berne July 17, 1899. 



Section 6. 

trademark treaties and conventions between foreign countries. 

The following statement, prepared by Mr. Greeley from informa- 
tion furnished by the International Bureau {La Propriete hidAistrielle^ 
August 31, 1899), showing the number of separate treaties entered 
into between foreign nations respecting the reciprocal protection of 
trademarks, indicates recognition in foreign countries, particularly 
those of leading commercial importance, of the importance to their 
foreign trade of securing protection for the trademarks of their 
manufacturers in other countries. 

EUROPEAN COUNTRIES. 

Austria-Hungary has treaties respecting the protection of trade- 
marks with the following European countries: Belgium, Bulgaria, 
Denmark, France, Germany, Great Britain, Greece, Italy, Nether- 
lands, Norway, Roumania, Russia, Serbia, Spain, Sweden, and Swit- 
zerland; and with the following non-European countries: The United 
States, Brazil, and Japan. 

Belgium has such treaties with the following European countries: 
Austria-Hungary, Denmark, Germany, Greece, Italy, Luxemburg, 
Netherlands, Portugal, Roumania, Russia, and Switzerland; and with 
the following non-European countries: The United States, Brazil, 
Japan, Mexico, and Venezuela. In addition, Belgium is a party to the 
International Convention.^ 

^ This Convention provides that each of the countries which are parties to it shall 
register and protect the trademarks of citizens and residents of each of the other 
countries which are parties to it. (See arts. 2, 3, 4, and 6 of the convention, p. 146.) 

The following countries are at present parties to this Convention: Belgium, Brazil, 
Denmark (with the Faroe Islands), Dominican Eepublic, France (with Algeria and 
the French colonies'), Great Britain (with New Zealand and Queensland), Italy, 
Japan, Netherlands (with the Dutch East Indies, Surinam, and Curasao), Norway, 
Portugal, Serbia, Spain, Sweden, Switzerland, Tunis, and the United States. 



262 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Bulgaria has made treaties with the following countries: Austria- 
Hungary, France, Great Britain, Russia, and Serbia. 

Denmark has such treaties with the following European countries: 
Austria-Hungary, Belgium, France, Germany, Great Britain, Neth- 
erlands, Russia, and Sweden; and with the following non-European 
countries: The United States, Argentine Republic, Brazil, Japan, and 
Venezuela. In addition, Denmark is a party to the International Con- 
vention. (See note under Belgium.) 

France has such treaties with the following European countries: 
Austria-Hungary, Bulgaria, Denmark, Germany, Great Britain, 
Greece, Italy, Luxemburg, Montenegro, Norway, Roumania, Russia, 
Serbia, Spain, and Sweden; and with the following non-European 
countries: The United States, Bolivia, Brazil, Colombia, Costa Rica, 
Dominican Republic, Guatemala, Japan, Morocco, Mexico, Peru, 
South African Republic, and Venezuela. In addition, France is a 
party to the International Convention. (See note under Belgium.) 

Germany has such treaties with the following European countries: 
Austria-Hungary, Belgium, Bulgaria, Denmark, France, Great Brit- 
ain, Greece, Italy, Luxemburg, Netherlands, Norway, Roumania, 
Russia, Serbia, Sweden, and Switzerland; and with the following non- 
European countries : United States, Brazil, Guatemala, and Venezuela. 

Great Britain has such treaties with the following European coun- 
tries: Austria-Hungary, Bulgaria, Denmark, France, Germany, 
Greece, Italy, Montenegro, Portugal, Roumania, Russia, Serbia, Spain, 
and Switzerland; and with the following non-European countries: 
United States, Bolivia, Colombia, Ecuador, Guatemala, Japan, Mexico, 
and Paraguay. In addition, Great Britain is a party to the Interna- 
tional Convention. (See note under Belgium.) 

Greece has such treaties with the following European countries: 
Austria-Hungary, Belgium, France, Germany, Great Britain, Italy, 
Montenegro, Netherlands, and Switzerland. 

Italy has such treaties with the following European countries: 
Austria-Hungary, Belgium, France, Germany, Great Britain, Greece, 
Luxemburg, Montenegro, and Russia; and with the following non- 
European countries: United States, Brazil, Colombia, Dominican 
Republic, Japan, Mexico, and Paraguay. In addition, Italy is a party 
to the International Convention. (See note under Belgium.) 

Luxemburg has such treaties with the following European coun- 
tries: Belgium, France, Germany, and Italy. 

Norway has such treaties with the following European countries: 
Austria-Hungary, Denmark, France, Germany, Spain, and Sweden. 
In addition, Norway is a party to the International Convention. (See 
note under Belgium.) 

Netherlands has such treaties with the following European coun- 
tries: Austria-Hungary, Belgium, Denmark, Germany, Greece, Rus- 
sia, and Switzerland; and with the following non-European countries: 
United States, Brazil, and Japan. In addition, Netherlands is a party 
to the International Convention. (See note under Belgium.) 

Portugal has such treaties with the following European countries: 
Belgium, Great Britain, and Russia; and with the following non- 
European countries: Brazil and Japan. In addition, Portugal is a 
party to the International Convention. (See note under Belgium.) 

Roumania has such treaties with the following European countries: 
Austria-Hungary, Belgium, France, Germany, and Switzerland. 



CONVENTIONS AND TREATIES. 263 

Russia has such treaties with the following European countries: 
Austria-Hungary, Belgium, Bulgaria, Denmark, France, Germany, 
Great Britain, Italy, Netherlands, Portugal, Serbia, Spain, and 
Switzerland; and with the following non-European countries: United 
States and Japan. 

Serbia has such treaties with the following European countries: 
Austria-Hungary, Bulgaria, France, Germany, Great Britain, Monte- 
negro, and Russia, and with the United States. In addition, Serbia is 
a party to the International Convention. (See note under Belgium.) 

Spain has such treaties with the following European countries: 
Austria-Hungary, France, Great Britain, Italy, Norway, Russia, and 
Sweden, and with the following non-European countries: United 
States, Japan, and Yenezuela. In addition, Spain is a party to the 
International Convention. (See note under Belgium.) 

Sweden has such treaties with the following European countries: 
Austria-Hungary, Denmark, France, Germany, Norway, and Spain, 
and with Japan. In addition, Sweden is a party to the International 
Convention. (See note under Belgium.) 

Switzerland has such treaties with the following European coun- 
tries: Austria-Hungary, Belgium, Germany, Great Britain, Greece, 
Netherlands, Roumania, and Russia, and with the United States and 
Japan. In addition, Switzerland is a party to the International Con- 
vention. (See note under Belgium.) 

In addition to the treaty arrangements above mentioned, Belgium, 
France, Germany, and the Netherlands are parties to an arrangement 
for the reciprocal protection in China of the trademarks of the sub- 
jects or citizens of any one of these countries against infringement by 
the subjects or citizens of any other of these countries. Under this 
arrangement (see La Propriete Industrielle of August 31, 1898, and 
December 31, 1899) infringement may be prosecuted before the con- 
sular tribunal of the country of the alleged infringer. The trade- 
mark, in order to be entitled to this protection, must have been 
registered in the country of the alleged infringer. 

A similar arrangement has been entered into between France and 
Great Britain with respect to the reciprocal protection of the trade- 
marks of their subjects or citizens in Korea. {La Propriete Lndus- 
trielle^ January 31, 1900.) 

CENTKAL AND SOUTH AMERICAN COUNTRIES. 

Argentine Republic has treaties providing for the registration and 
protection of trademarks with Denmark, and with Paraguay, Peru, and 
Uruguay. 

Brazil has such treaties with Austria-Hungary, Belgium, Denmark, 
France, Germany, Italy, Netherlands, and Portugal, and with the 
United States. In addition, Brazil is a party to the International Con- 
vention. (See note under Belgium.) 

Costa Rica has such treaties with France and with Honduras. 

Guatemala has such treaties with France, Germany, and Great Brit- 
ain, and with Honduras and Salvador. 

Mexico has such treaties with Belgium, France, Great Britain, and 
Italy. 

Paraguay has such treaties with Great Britain and Italy, and with 
Argentine Republic, Peru, and Uruguay. 

S. Doc. 20 18* 



264 REVISION OF STATUTES RELATING TO PATENTS, ETC. 



Peru has such treaties with France, and with Argentine Republic, 
Japan, Paraguay, and Uruguay. 

Uruguay has such treaties with Argentine Republic, Paraguay, and 
Peru. 

Venezuela has such treaties with Belgium, Denmark, France, Ger- 
many, and Spain. 

OTHER COUNTRIES. 

Japan has such treaties with Austria-Hungary, Belgium, Denmark, 
France, Germany, Great Britain, Italy, Netherlands, Portugal, Russia, 
Spain, Sweden, and Switzerland, and with the United States and Peru. 
In addition, Japan is a party to the International Convention. (See 
note under Belgium.) 

South African Republic has such treaties with France and Geimany. 



4 



Chapter X. 

OPINION OF THE ATTORNEY-GENERAL OF THE UNITED STATES 
UPON THE CONSTRUCTION OF THE ARTICLES OF THE INTER- 
NATIONAL CONVENTION FOR THE PROTECTION OF INDUSTRIAL 
PROPERTY. 



LEGISLATION FOR THE ENFORCEMENT OF THE TREATY NECESSARY. 

This treaty is a reciprocal one. Each party to it covenants to grant in the future 
to the subjects and citizens of the other parties certain special rights in consideration 
of the granting of like special rights to its subjects and citizens. It is a contract 
operative in the future infraterritorially. It is therefore not self-executing, but 
requires legislation to render it effective for the modification of existing laws. 

Department of Justice, 

Washington, D. 6*1, April 5, 1889. 

Sir: Your predecessor, by his letter of the 15th of January, 1889, 
requested the opinion of the Attorney-General on the following state 
of facts: 

Section 4902 of the Revised Statutes grants the right to file caveats 
preliminary to applications for patents for inventions and establishes 
the legal effect that shall be given to them. It also provides — 

Any ciiizen of the United States who makes any new invention or discovery, and 
desires further time to mature the same, may * * * file in the Patent Office a 
caveat. 

It further provides — 

An alien shall have the privilege herein granted if he has resided in the United 
States one year next preceding the filing of his caveat and has made oath of his inten- 
tion to become a citizen. 

By the first of these clauses the grant of the right is limited to citi- 
zens. By the second it is enlarged to include one class of aliens. The 
grant as a whole entitles only citizens and aliens who have been resi- 
dents 1 3^ear and have legally declared their intention to become citi- 
zens to file caveats. 

It is claimed by Ferdinand Bourquin, a Swiss citizen, that the second 
article of a convention entered into between the United States and cer- 
tain other nations, of which the Swiss Confederation was one, pro- 
claimed on the 7th day of June, 1887 (U. S. Statutes of 1887 and 1888, 
treaties, 37), extends the grant of section 4902, Revised Statutes, to all 
subjects and citizens of the parties to the convention. That article 
provides — 

The subjects or citizens of each of the contracting States shall enjoy in all the other 
States of the Union, so far as concerns patents for inventions, trade or commercial 
marks, and the commercial name, the advantages that the respective laws thereof at 
present accord or shall afterward accord to subjects or citizens. In consequence 
they shall have the same protection as these latter, and the same legal recourse 
against all infringements of their rights, under reserve of complying with the for- 
malities and conditions imposed upon subjects or citizens by the domestic legislation 
of each State, 

265 



266 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Congress has passed no law for the execution of this article, nor did 
the House of Eepresentatives in any way consider or assent to the 
treaty. 

Section 4902 is a part of the system of laws of the United States 
concerning patents for inventions. If, therefore, the article above 
quoted has become and is self-executing as an infraterritorial law, by 
virtue of the making and proclamation of the treaty by the President, 
by and with the advice and consent of the Senate, the claim made by 
Ferdinand Bourquin is valid. By the second clause of the second sec- 
tion of the second article of the Constitution, the power to make trea- 
ties, by and with the advice and consent of the Senate, is vested in the 
President. By the second clause of the sixth article of the Constitu- 
tion, "all treaties made or which shall be made under the authority of 
the United States shall be the supreme law of the land. " ^y the eighth 
clause of the eighth section of the first article the whole legislative 
power over the subject of patents is committed to Congress. It is 
found among the powers to borrow money; to coin money; to declare 
war; to raise and support armies; to constitute judicial tribunals; to 
regulate commerce, etc. It is due to the credit of the United States 
that the provisions concerning the treaty-making power of the Presi- 
dent and the legislative power of Congress shall, if possible, be so con- 
strued and executed as to give full and proper effect to each and insure 
harmony in their exercise. 

In the case of Foster t>. Neilson (2 Peters, 314), Chief Justice Mar- 
shall, delivering the opinion of the court, in discussing the effect of 
the Constitution on treaties as laws, declared: 

A treaty is, in its nature, a contract between two nations, not a legislative act. It 
does not generally effect of itself the object to be accomplished, especially so far as 
its operation is infraterritorial, but is carried into execution by the sovereign power 
of the respective parties to the instrument. 

In the IJnited States a different principle is established. Our Constitution declares 
a treaty to be the law of the land. It is consequently to be regarded in courts of 
justice as equivalent to an act of the legislature whenever it operates of itself without 
the aid of any legislative provision. But when the terms of the stipulation import a con- 
tract, when either of the parties engaged to perform a particular act, the treaty addresses 
itself to the political, not the judicial department; and the legislature must execute the con- 
tract before it can become a rule for the court. 

The principle thus stated has been generally accepted as a true inter- 
pretation of the constitutional provisions relating to the subject of 
treaties. It establishes that there is a class of treaties which, without 
legislation, do not become self -executing as a rule of municipal law. 
A statement is given of such provisions of treaties as come within this 
class; as "when the terms of the stipulation import a contract, when 
either of the parties engages to perform a particular act." But the 
decision does not enumerate or define the limitations of the whole class. 
In the treaty -making power conferred on the President the implication 
exists that the power is to be exercised by him subject to the limitation 
of the Constitution. If, in time of peace, he should provide by the 
stipulations of a treaty for the quartering of soldiers in any house 
without the consent of the owner, such a stipulation would be simply 
void, because forbidden by the Constitution to every department of 
the Grovernment. But where the Government of the United States 
has power under the Constitution over a subject, although that power 
may be vested by the Constitution exclusively in Congress, it has been 
claimed that in the making of treaties such power may be exercised by 



OPINION OF ATTORNEY-GENERAL. 267 

the President, by and with the advice and consent of the Senate, with- 
out the cooperation of the House of Representatives or act of Con- 
gress. Issue was joined on this proposition in 1Y96 between the 
President and Senate in the affirmative, and the House of Representa- 
tives in the negative, concerning certain provisions of the Jay treaty 
with Great Britain. The treaty, at the end of the disagreement, 
remained intact, but the House of Representatives — 

passed resolutions disclaiming the power to interfere in making treaties, but asserting 
their right, whenever stipulations were made on subjects committed to Congress by 
the Constitution, to deliberate on the expediency of carrying them into effect; and 
in legislating on several treaties then before them they struck out the words, ' ' that 
provision ought to be made by law," and substituted words which declared merely 
the expediency of passing the necessary laws. (Sargeant's Constitutional Law, 411; 
Story on the Constitution, section 1841. ) 

In the session of 1815 and 1816 a like disagreement arose concerning 
a commercial treaty made in the July preceding "between the United 
States and Great Britain, by which it was agreed to abolish the dis- 
criminating duties on British vessels and cargoes." This disagreement 
was terminated with no decisive results. 

The treaty between the United States and the King of the Hawaiian 
Islands, signed January 30, 1875, which provided for commercial reci- 
procity between the nations, and involved the exercise of one of the 
powers submitted to Congress by the Constitution, provided in its 
fifth article that it should not be ratified "until a law to carry it into 
operation should be passed by the Congress of the United States of 
America." (19 U. S. Stats., 627.) In execution of this treaty Con- 
gress, on the 15th of August, 1876 (19 U. S. Stats., 200) passed an act 
in accordance with the provisions of the treaty. The treaty by its 
terms, however, was clearly a contract by which, in consideration of 
certain special commercial privileges granted on the one part, certain 
other like privileges were granted on the other. Such special privi- 
leges granted in consideration of others received, the Supreme Court 
of the United States in the case of Bartram v. Robertson (122 U. S. , 
120) ruled, constitute a contract. Field, J., delivering the opinion 
(speaking of the treaty with Denmark as compared with that of the 
Hawaiian Islands) declaring: 

Those stipulations, even if conceded to be self-executing, by the way of a pro\aso 
or exception to the general law imposing the duties, do not cover concessions like 
those made to the Hawaiian Islands for a valuable consideration. They were pledges 
of two contracting parties, the United vStates and the King of Denmark, to each other; 
that, in the imposition of duties on goods imported into one of the countries which 
were the product or manufacture of the other, there should be no discrimination 
against them in favor of goods of like character imported from any other country. 
They imposed an obligation on both countries to avoid hostile legislation in that 
respect. But they were not intended to interfere with special arrangements with other 
countries founded upon a concession of special privileges. (See also Whitney v. Rob- 
ertson, 124 U. S., 192.) 

If the treaty -making power, in all treaties whose execution required 
the exercise of powers committed to Congress, should uniformly pro- 
vide in the treaties for their proper submission to Congress before 
they should be effective, consequences might be avoided which may 
jeopardize the credit of the nation. Under the British constitution, 
with reference to this subject the jurisdiction of Parliament is thus 
stated in 1 Todd's Parliamentary Government in England, page 610: 

The constitutional power appertaining to Parliament in respect to treaties is limited. 
It does not require their formal sanction or ratification by Parliament as a condition 
to their validity. The proper jurisdiction of Parliament in such matters may be thus 



268 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

defined: First, it is right to give or withhold its sanction to those parts of a treaty 
that require a legislative enactment to give it force and effect, as, for example, when 
it provides for an alteration in the criminal or municipal law, or proposes to change 
existing tariffs or commercial regulations. * * * If a treaty requires legislative 
action in order to carry it out, it should be subjected to the fullest discussion in Par- 
liament, and especially in the House of Commons, with a view to enable the Govern- 
ment to promote effectually the important interests at stake in their proposed 
alterations in the foreign policy of the nation. 

It is not necessary to the decision of the question submitted to me in 
the matter under consideration to determine whether all the provisions 
of treaties, whose execution requires the exercise of powers submitted 
to Congress, must be so submitted, before they become law, to the 
courts and Executive Departments, for the treaty under consideration 
is a reciprocal one. Each party to it covenants to grant in the future 
to the subjects and citizens of the other parties certain special rights in 
consideration of the granting of like special rights to its subjects or 
citizens. It is a contract operative in the future inf raterritorially. It 
is therefore not self -executing, but requires legislation to render it 
eJffective for the modification of existing laws. 
Very respectfully, 

W. H. H. Miller, 

Attoimey- General. 

The Secretary of the Interior. 



Chapter XL 

LAWS OF CERTAIN FOEEIGH COUNTEIES GIVING EFFECT TO 
THE PROVISIONS OF THE INTERNATIONAL CONVENTION CON- 
CLUDED AT PARIS MARCH 20, 1883, AS REGARDS PRIORITY, 
THE REGISTRATION OF TRADEMARKS, AND THE PROTECTION 
OF INVENTIONS SHOWN AT INTERNATIONAL EXPOSITIONS. 



Section 1. 

BBAZIL. 

(d) PATENTS. 
(Law of October 14, 1882.) 

Art. n. Inventors receiving privileges in other countries can obtain 
a confirmation of their rights in this Empire, provided that they ful- 
fill the formalities and conditions of this law and observe the further 
dispositions in force applicable to the case. The confirmation will 
give the same rights as a patent conceded in the Empire. 

Sec. 1. The priority of the property right of that inventor who, 
having solicited a patent from a foreign country, shall make a similar 
petition to the Imperial Government within seven months, will not be 
invalidated by facts which may occur during this period — to wit, 
another similar petition, the publication of the invention, and its use 
or employment. 

Sec. 2. To the inventor who, before obtaining a patent, desires to 
experiment in public with his inventions, or wishes to exhibit them in 
an exposition, official or officially recognized, will be granted a title 
provisionally guaranteeing to him his right of property for a specified 
time and with the formalities required. 

{b) TRADEMARKS. 

(Law of October 14, 1887.) 

Art. XXV. The provisions of this law are applicable to Brazilians 
or foreigners whose establishments are without the Empire, under the 
following requirements: 

1. That there exists between the Empire and the nation in whose 
territory are the said establishments a diplomatic convention securing 
reciprocity of guarantee for Brazilian marks; 

2. That the marks have been registered in conformity with local 
law; 

3. That the respective model and certificate of registry have been 
deposited in the Junta Commercial of Rio de Janeiro; 

269 



270 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

^ 4. That the certificate and explanation of the mark have been pub- 
lished in the Diario Official. 

Art. XXVI. In case of compliance with requirements Nos. 2 to 4 
of the preceding article, the provision in article 9, No. 3, shall have 
effect in favor of marks registered in foreign countries which signed 
the Convention promulgated by Decree No. 9233, of June 28, 1884, or 
which approved it for the space of four months, counting from the 
day when the registry is made according to local law. 

(Regulation of December 31, 1887.) 

Art. V. In favor of marks registered in foreign countries which 
signed the Convention promulgated b}^ Decree No. 9233, of June 28, 
1884, or which afterwards agreed to it, the provisions of article 20 of 
this regulation is valid for the term of four months, counting from the 
day when the registry is made according to local law whenever the re- 
quirements indicated in Nos. 2, 3, and 4 of the preceding article have 
been complied with. (Law, art. 26.) 



Section 2. 

CEYLON. 

(British colony— Not a party to the Convention.) 

PATENTS. 

(Law of 1892.) 

Sec. 24. If an inventor, being the exhibitor of his invention at an 
industrial or international exhibition, certified as such by the Gover- 
nor, causes a petition for leave to file a specification of the invention 
to be delivered to or received by the Colonial Secretary within six 
months from the date of the admission of the invention into that exhi- 
bition, the invention shall not be deemed to have been publicl}^ used, 
or made publicly known, within the meaning of this ordinance, by 
reason only of the invention having at an}^ time after its admission 
into the exhibition been publicly used or made publicly known. 



Section 3. 

DENMARK. 
{a) PATENTS. 

(Law of March 28, 1894.) 

Sec. 28. When an invention is shown at an international exhibition 
in this country, which is acknowledged as such by the Minister of the 
Interior, the inventor shall have the right to obtain a patent irrespec- 
tively of the invention having during that time been so described or 



LAWS OF FOREIGN COUNTRIES, ETC. 271 

api»lied as mentioned in sec. 1, clause 3, provided he lodges an appli- 
cation with the Patent Commission within six months of the invention 
being first shown at the exhibition. It may be provided by royal ordi- 
nance that the same shall apply to inventions which are shown at 
international exhibitions held in a foreign State, and acknowledged 
as such by the State in question. 

It may also be decided by royal ordinance: 

(1) That an inventor who has lodged an application for a patent for 
an invention in a foreign State shall have the right to obtain a patent 
in this country irrespectively of the invention having, during the fol- 
lowing seven months, been so described or applied as mentioned in 
section 1, clause 3, provided he, in the course of that period, lodges 
an application for a patent in this country; and 

(2) That the application so lodged in this country shall, relatively 
to other applications, be considered as made at the same time as the 
application in the foreign State. 

(J) TRADEMARKS. 

(Law of April 11, 1890.) 

Art. 14. The King may decree, under condition of reciprocity, that 
the protection given to trademarks by the present law shall be equally 
accorded to those who, in a foreign country, are engaged in industry 
of the kind mentioned in article 1. The provisions of the law shall, 
in consequence, be applicable in such case, provided the following 
special regulations with reference to filing trademarks are observed. 

1. The application must be accompanied by a certificate showing 
that the applicant has complied with the formalities required in the 
foreign country for protection of his trademark. 

2. The applicant shall submit to the jurisdiction of the Maritime 
and Commerce Tribunal of Copenhagen and designate a representative 
domiciled in the country who shall take action in his name. 

3. The trademark is not protected to a greater degree or for a 
longer term than in the foreign country. 

In reference to trademarks registered in countries which accord the 
same privileges to Danish trademarks, the King may make the fol- 
lowing provisions: 

4. The trademark, if it is not contrary to morality or to public 
order, shall be registered in the form in which it is protected in the 
foreign country. 

5. If within a period of four months from the day on which the 
trademark is filed in the foreign country an interested party shall 
apply for registration in the realm, this application shall be con- 
sidered, as regards the applications of others, as having been made 
simultaneously with the application in the foreign country. 

6. If, registration having been refused for the reason mentioned in 
article 4, paragraph 5, after the person who claims to have previously 
filed or registered such mark has been summoned before the tribunals, 
the applicant furnishes proof that he was the original user of the trade- 
mark, but that such person has appropriated it, the tribunal may 
declare the applicant entitled to register the trademark, and to have 
the exclusive right to use the trademark for the goods on which he 
used it at the date on which reciprocity as to protection went into 



272 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

force. But the application in this regard shall not be received after 
six months after the date in question, without prejudice to the right 
guaranteed by article 10, paragraph 3. 

7. If a convention is concluded with a foreign country, the laws of 
which conform to the provisions of the present law, the King may 
decree in addition that old marks already registered in the country of 
origin by traders in iron and in wood (carpentry) of the country, and 
consisting in whole or essentially of figures, letters, or words not in 
distinctive form, shall enjoy, when they are protected in the foreign 
country, special protection in Denmark. It shall, therefore, be for- 
bidden to all other persons to make use of the same figures, letters, or 
words as a trademark for the same kind of goods unless they have 
made use of it before reciprocity as to protection went into force. 
Nevertheless, no one shall be prevented from employing as a mark 
the initials of his name or of his firm name. Application to have this 
effect shall not, however, be made except within a term to be fixed by 
royal decree. The publication relative to such registration must state 
the kind of goods for which it is made, and state that it was made con- 
formably to this provision. 



Section 4. 

FRANCE. 
PATENTS. 

(Lawof May23, 1868.) 

Art. I. Every Frenchman or foreigner, the author either of a 
discovery or invention capable of being patented in the terms of the 
law of the 5th of July, 1844:, or of a design which can be lodged 
conformably to the law of the 18th of March, 1806, or persons entitled 
through him, may, if they are admitted to a public exhibition author- 
ized by the Government, cause to be delivered by the prefect or sub- 
prefect in the department or district in which such exhibition is open 
a certificate descriptive of the article shown. 

Art. II. This certificate assures to the person who obtains it the 
same rights that would be conferred upon him hj a patent of inven- 
tion or by a legal deposit of the design, to date from the day of admis- 
sion up to the end of the third month which follows the closing of the 
exhibition, without prejudice to the patent which the exhibitor may 
take or to the deposit which he may effect before the expiration of 
this period. 

Art. III. The application for this certificate must be made in the 
first month, at latest, of the opening of the exhibition. It must be 
addressed to the prefecture or subprefecture, and be accompanied by 
an exact description of the article to be protected, and, where possible, 
by a plan or drawing of the said article. 

The applications, together with the decisions arrived at by the pre- 
fect or subprefect, are inscribed in a special register, which is subse- 
quently transmitted to the ministry of agriculture, commerce, and 
public works, and communicated without fee to every applicant. 

The certificate is delivered gratis. 



LAWS OF FOREIGIT COUNTRIES, ETC. 278 

Section 5. 

GREAT BRITAIN. 

The Patents, Designs, and Trademarks Act, 1883. 

Sec. 103. (1) If Her Majesty is pleased to make any arrangement 
with the government or governments of an}^ foreign State or States 
for mutual protection of inventions, designs, and trademarks, or any 
of them, then any person who has applied for protection for any inven- 
tion, design, or trademark in any such State shall be entitled to a 
patent for his invention or to registration of his design or trademark 
(as the case may be) under this act, in priority to other applicants; 
and such patent or registration shall have the same date as the date of 
the application in such foreign State. 

Provided, That his application is made in the case of a patent 
within seven months, and in the case of a design or trademark within 
four months, from his applying for protection in the foreign State 
with which the arrangement is in force. 

Provided^ That nothing in this section contained shall entitle the 
patentee or proprietor of the design or trademark to recover damages 
for infringements happening prior to the date of the actual accept- 
ance of his complete specification, or the actual registration of his 
design or trademark in this countr}^ as the case may be. 

(2) The publication in the United Kingdom or the Isle of Man during 
the respective periods aforesaid of an}^ description of the invention, 
or the use therein during such periods of the invention, or the exhi- 
bition or use therein during such periods of the design, or the publica- 
tion therein during such periods of a description or representation of 
the design, or the use therein during such periods of the trademark, 
shall not invalidate the patent which may be granted for the invention 
or the registration of the design or trademark. 

(3) The application for the grant of a patent, or the registration of a 
design, or the registration of a trademark under this section must be 
made in the same manner as an ordinary application under this act: 
Provided^ That in the case of trademarks any trademark the regis- 
tration of which has been duly applied for in the country of origin 
may be registered under this act. 

(4) The provisions of this section shall apply only in the case of those 
foreign States with respect to which Her Majest}^ shall from time to 
time by order in council declare them to be applicable, and so long only 
in the case of each State as the order in council shall continue in force 
with respect to that State. 

Sec. 39. The exhibition of an invention at an industrial or inter- 
national exhibition, certified as such by the board of trade, or the pub- 
lication of any description of the invention during the period of the 
holding of the exhibition, or the use of the invention for the purpose 
of the exhibition in the place where the exhibition is held, or the use 
of the invention during the period of the holding of the exhibition by 
any person elsewhere, without the privity or consent of the inventor, 
shall not prejudice the right of the inventor or his legal personal rep- 
resentative to apply for and obtain provisional protection and a patent 
in respect of the invention, or the validity of any patent granted on the 



274 REVISION OF STATUTES RELATING TO PATENTS, ETC. 



application, provided that both the following conditions are complied 
with, namely — 

(a) The exhibitor must, before exhibiting the invention, give the 
comptroller the prescribed notice of his intention to do so; and 

(h) The application for a patent must be made before or within six 
months from the date of the opening of the exhibition. 

(The Patents Act, 1886.) 

Sec. 3. Whereas by section 39 of the patents, designs, and trade- 
marks act, 1883, as respects patents, and by section 57 of the same 
act as respects designs, provision is made that the exhibition of an 
invention or design at an industrial or international exhibition, certi- 
fied as such by the board of trade, shall not prejudice the rights of the 
inventor or proprietor thereof, subject to the conditions therein men- 
tioned, one of which is that the exhibitor must, before exhibiting the 
invention, design, or article, or publishing a description of the design, 
give the comptroller the prescribed notice of his intention to do so: 

And whereas it is expedient to provide for the extension of the said 
sections to industrial and international exhibitions held out of the 
United Kingdom, 

JSe it therefore enacted as follows : 

It shall be lawful for Her Majesty, b}^ order in council, from time 
to time, to declare that sections 39 and 57 of the patents, designs, and 
trademarks act, 1883, or either of those sections, shall apply to an}^ 
exhibition mentioned in the order in like manner as if it were an Indus 
trial or international exhibition certified by the board of trade, and to 
provide that the exhibitor shall be relieved from the conditions, speci- 
fied in the said sections, of giving notice to the Comptroller of his 
intention to exhibit, and shall be so relieved either absolutely or upon 
such terms and conditions as to Her Majesty in council may seem fit. 



Section 6. 

INDIA.' 

British colony— Not a party to the Convention. 

PATENTS. 

(Law of 1888.) 

Sec. 26. If an inventor, being the exhibitor of his invention at an 
industrial or international exhibition, certified as such by the Governor- 
General in council, causes an application for leave to file a specifica- 
tion of the invention to be delivered to or received by the secretary 
within six months from the date of the admission of the invention into 
that exhibition, the invention shall not be deemed to have been pub- 
licly used or made publicly known, within the rneaning of this part, 
by reason only of the invention having at any time after admission 
into the exhibition been publicly used or made publicly known. 



laws of foeeign countries, etc, 275 

Section 7. 

ITALY. 

(Decree of January 16, 1898.) 

Whoever shall have regularly deposited in Germany or in one of 
the States which have adhered to the Convention of Paris, dated March 
20, 1883, an application for patent or a model of utility {Gebrauchs- 
miister), a design or industrial model, or a mark of trade or commerce, 
may, in effecting the same deposit in Italy, ask that mention be made 
in the Italian patent or certificate of the right of priorit}^ which is 
intended to be reserved according to the terms of article 4 of the above- 
mentioned Convention or of articles 3 and 4 of the Italo-German Con- 
vention of January 18, 1892, upon the condition of conforming to the 
provisions of the following articles: 

The deposit of the application in Italy should be made — 

{a) Within three months from the date of the first deposit made in a 
foreign country, if it relates to designs or industrial models, to models 
of utility or marks of trade or commerce; 

(p) Within six months from the date of the first deposit made in one 
of the States adhering to the Convention of Paris, dated March 20, 1883, 
if it relates to patents for invention. 

{c) Within three months from the date of the grant of the patent for 
invention when the application has been deposited in Germany. 

For applications made in countries beyond the sea the delays of three 
and six months, mentioned under letters {a) and (b) of the preceding- 
article, have been increased by one month. 



Section 8. " 

JAPAN. 

{a) patents. 

(Law of March 1,1899.) 

Art. XIV. In case an}^ person who has applied for patent of an 
invention in one of the countries under the treaty of Industrial Prop- 
ert}^ Protection Union, shall also apply for patent of the same inven- 
tion within seven months, such application shall be deemed to have 
been made on the date of the first application. 

Art. XY. When any person exhibiting his articles in any exhibi- 
tion held b}^ the Government or by the local authorities shall intend to 
apply in future for a patent of the invention regarding to the same 
articles, he shall inform such intention to President of Patent Bureau 
before he exhibits them. 

In the above-mentioned case, the subsequent application for patent 
shall be deemed to have been made on the date of such information, 
provided that such subsequent application shall be made within six 
months from the date when the articles were received in such exhibition. 

In case a Universal Exhibition is held in one of the countries under 
the treaty of Industrial Property Protection Union, the time allowed 
in such countr}^ for the subsequent patent application regarding to 
exhibited articles shall hold valid in this Empire. 



276 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

(h) TRADElilARKS. 

(Law of March 1, 1899.) 

Art. IX. In case any person who applied for the registration of 
trademarks in one of the countries under the treaty of Industrial 
Property Protection Union shall apply for registration of the same 
trademarks within four months, the said application shall have the 
same effect as to have been made on the date of the first application. 

Art. XX. The provisions of Patent Act, Arts. * * * XV 
* * * shall apply to trademarks. 



Section 9. 

MALTA. 

(British colony— Not a party to the Convention.) 

PATENTS. 

(Law of 1899.) 

Sec. 5. Any person who has applied for protection of an invention 
in the United Kingdom or in an}^ British possession, or an}^ person who 
has applied for protection in an}' foreign State with which Her Majesty 
has made an arrangement for mutual protection of inventions, shall be 
entitled to a patent for his invention in these islands under this ordi- 
nance in priority to other applicants. 

Sec. 6. With respect to foreign States the provisions of the next 
preceding article shall apply only in the case of those foreign States 
with respect to which Her Majesty shall from time to time, by order 
in council, declare the provisions of section 103 of the imperial act 46 
and 47, Victoria, chapter 57, to be applicable, and so long only, in the 
case of each State, as the order in council shall continue in force with 
respect to that State. 

Section 10. 

NETHERLANDS 
TRADEMARKS. 

(Law of September 30, 1893.) 

Art. 3. (Last paragraph.) The person who, within the period fixed 
in article 4 of the International Convention of Madrid aforesaid, has 
sent a mark to the Bureau for Industrial Property, which, with due 
observance of article 6 of the Convention just mentioned, he has depos- 
ited according to the regulations in one of the States that are parties 
to that Convention, shall be accounted to have used that mark at the 
commencement of that period in the Kingdom in Europe. 

Art. 7. All Netherlands subjects and foreigners living within the 
Kingdom in Europe, or having their chief industrial or trading estab- 



LAWS OF FOREIGN COUNTRIES, ETC. 277 

lishments there, who wish to secure protection of their marks, sent in, 
in accordance with article 4, in other such States as are parties to the 
Madrid Convention, shall send to the Bureau for Industrial Property 
three copies more, one of which shall bear the sender's signature, 
together with a distinct drawing of the mark and a cliche, in accord- 
ance with the requirements of article -i. 

The second paragraph of article -i is applicable to this case. 

The Bureau aforesaid shall retain the signed cop}^ of the drawing, 
which shall be certified to, and shall further undertake, provided the 
mark is registered or as soon as possible thereafter, in accordance with 
the requirements of article 5 with due observance of existing regula- 
tions, the immediate application for registration at the Internationa] 
Bureau at Berne, and shall notify the sender of all that the last-named 
Bureau ma}^ advise with regard to the said mark, as also everything 
that may be of interest to him. 

If the mark sent in, in accordance with the requirements of article 
4, is not registered as prescribed bv article 5, the Bureau for Industrial 
Property shall notify the sender that application for registration at the 
International Bureau at Berne can not yet be made. 

Art. 8. With reservation of the provision of article 9 the Bureau 
for Industrial Property shall, within three days of the date of the receipt 
of the notice from the International Bureau at Berne, as prescribed by 
article 3 of the aforementioned Madrid Convention, enter the mark 
referred to in that notice in the public register appointed for that 
object, the model of the said register to be fixed by the Minister of 
Justice. 

The announcement when received shall be certified to, and the date 
and number of the entry in the register added thereto. 

If the international registered mark has been sent in to the Bureau 
for Industrial Property in accordance with the provisions of article 7, 
said Bureau shall notify the sender as soon as possible of such inter- 
national registration, together with duly dated attest of the registra- 
tion mentioned in the first paragraph of this article. 

The supplement of the ''journal" of the International Bureau at 
Berne containing the annoucement of the registration of marks at that 
place shall be obtainable at the Bureau for Industrial Property. 

From time to time notice of this last-mentioned fact shall be made in 
the Netherlands official organ. 



Section 11. 

NEW SOUTH WALES. 

(British colony— Not a party to the Convention.) 

(Law of December 10, 1897.) 

Akt. 2. (1) If Her Majesty is pleased, by order in council, to apply 
the x.>rovisions in the said section 103 of the imperial act, called "The 
patents, designs, and trademarks act, 1883," to this colony, then any 
person who has applied for protection for any invention, design, or 
trademark in England or in any foreign State with the Government 
of which Her Majesty has made an arrangement under the said section 



278 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

for mutual protection of inventions, designs, or trademarks, or any of 
them, shall be entitled to a patent for his invention, or to registration 
of his design or trademark (as the case may be) under this act, in pri- 
ority to other applicants ; and such patent or registration shall take 
effect from the same date as the date of the application in England or 
such foreign State, as the case may be. 

Such application shall be made in the case of a patent within seven 
months, and in the case of a design or trademark within four months, 
from such person applying for protection in England or the foreign 
State with which the arrangement is in force. 

Nothing in this section contained shall entitle the patentee or pro- 
prietor of the design or trademark to recover damages for infringe- 
ments happening prior to the date of the actual acceptance of his 
complete specification, or the actual registration of his design or trade- 
mark, as the case may be, in this colony. 

(2) The publication in this colony during the respective periods 
aforesaid of any description of the invention, or the use therein during 
such periods of the invention, or the exhibition or use therein during 
such periods of the design, or the publication therein during such 
periods of a description or representation of the design, or the use 
therein during such periods of the trademark, shall not invalidate the 
patent which may be granted for the invention or the registration of 
the design or trademark. 

(3) The application for the grant of a patent or the registration of 
a design or the registration of a trademark under this section must be 
made in the same manner as an ordinary application under the act 16 
Victoria, No. 24-, and any acts amending the same, or the copyright 
act, 1879, and any act amending the same, or the trademarks act, 1865, 
and any acts amending the same, as the case may be. In the case of 
trademarks, any trademark the registration of which has been duly 
applied for in the country of origin may be registered under the trade- 
marks act, 1865, and any act amending the same. 

(4) The provisions of this section shall, in the case of foreign States, 
apply only in the case of those foreign States with respect to which 
Her Majesty shall from time to time, by order in council, declare the 
provisions of the aforesaid section 103 of the said first-recited imperial 
act to be applicable, and so long onl}^ in the case of each State as the 
order shall continue in force with respect to that State. 



Section 12. 
new zealand. 

(British colony.) 

(Law of 1889.) 



Art. 17. The exhibition of an invention at any colonial, intercolo- 
nial, or international exhibition held at an}^ place either within or 
beyond the colony, and declared by the governor by notification in 
the Gazette to be an "industrial exhibition" for the purposes of this 
act, or the publication of any description of the invention during the 
period of the holding of the exhibition, or the use of the invention for 
the purpose of the exhibition in the place where the exhibition is held, 
or the use of the invention during the period of the holding of the 
exhibition by any person elsewhere, without the privity or consent of 



LAWS OF FOKEIGN COUNTRIES, ETC. 279 

the inventor, shall not prejudice the right of the inventor or his legal 
personal representative to apply for and obtain provisional protection 
and a patent in respect of the invention, or the validity of any patent 
granted on the application, subject as follows, namely: 

In the case of an exhibition held at any place within the colony: 

(a) The exhibitor must, before exhibiting the invention, give the 
registrar notice of his intention to do so; and 

(h) The application for a patent must be made before or within six 
months from the date of the opening of the exhibition. 

In the case of an exhibition held at any place outside the colony : 

The foregoing conditions shall also apply; but the Governor may 
exempt, either absolutely or upon such terms and conditions as he 
shall think fit, any exhibitor from the condition of giving previous 
notice to the registrar of his intention to exhibit. 

Akt. 106. (1) If Her Majesty is pleased by order in council to apply 
the provisions of section 103 of the imperial act called "The patents, 
designs, and trademarks act, 1883," to the colony of New Zealand, 
then any person who has applied for any protection for any invention, 
design, or trademark in England, or in any foreign State with the 
Government of which Her Majesty has made an arrangement under 
the said section for mutual protection of inventions, designs, or trade- 
marks, or any of them, shall be entitled to a patent for his invention 
or to registration of his design or trademark, as the case may be, 
under this act, in priority to other applicants; and such patent or regis- 
tration shall take effect from the same date as the date of the applica- 
tion in England or such foreign State, as the case may be: Provided, 
That his application is made, in the case of a patent, within twelve 
months, and in the case of a design or trademark within six months, 
from his applying for protection in England or the foreign State with 
which the arrangement is in force. 

Nothing in this section contained shall entitle the patentee or pro- 
prietor of the design or trademark to recover damages for infringe- 
ments happening prior to the date of the actual acceptance of his 
specification or the actual registration of his design or trademarks in 
this colony, as the case may be. 

(2) The publication in New Zealand during the respective periods 
aforesaid of any description of the invention, or the use therein during 
such periods of the invention, or the exhibition or use therein during 
such periods of the design, or the publication therein during such 
periods of a description or representation of the design, or the use 
therein during such periods of the trademark, shall not invalidate the 
patent which may be granted for the invention or the registration of 
the design or trademark. 

(3) The application for the grant of a patent or the registration of 
a design or the registration of a trademark under this section must 
be made in the same manner as an ordinary application under this 
act; but in the case of trademarks any trademark the registration of 
which has been duly applied for in the country of origin may be 
registered under this act. 

(4) The provisions of this section shall, in the case of foreign States, 
apply only in the case of those foreign States with respect to which 
Her Majesty shall from time to time, by order in council, declare the 
provisions of the aforesaid section of the said imperial act to be appli- 
cable, and so long only in the case of each State as the order in council 
shall continue in force with respect to that State. 

S. Doc. 20 19* 



280 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Section 13. 

NORWAY. 

{a) PATENTS. 

(Law of June 16, 1885.) 

Art. 33. If an3^one who shall have in a foreign country applied for 
patent for an invention within a period of seven months after such 
foreign application hands in an application for patent in this country 
for the same invention, this last application shall (in case the said for- 
eign country grants reciprocal rights to Norwegians) be considered in 
relation to other applications as if it had been handed in at the same 
time that the application was made in the foreign State. 

(h) TRADEMARKS. 

(Lawof May 26, 1884.) 

Art. 15. The King may decree, under condition of reciprocity, 
that the protection given to trademarks by the present law shall be 
equalty accorded to those who, in a foreign country, are engaged in 
industry of the kind mentioned in article 1. The provisions of the 
law shall, in consequence, be applicable in such case, provided the 
following special regulations with reference to filing trademarks are 
observed: 

1. The application must be accompanied by a certificate showing 
that the applicant has complied with the formalities required in the 
foreign country for protection of his trademark. 

2. In all matters which concern the mark, the applicant shall recog- 
nize the jurisdiction of the tribunal of Christiania, and shall appoint 
an authorized representative domiciled in the country who shall respond 
in his name. 

3. The trademark is not protected to a greater degree or for a 
longer term than in the foreign country. 

In reference to trademarks registered in countries which accord the 
same privileges to Norwegian trademarks, the King may make the 
following provisions : 

4. The trademark, if it is not contrary to moralit}^ or to public 
order, shall be registered in the form in which it is protected in the 
foreign countr}^. 

5. If, within a period of four months, from the day on which the 
trade-mark is filed in the foreign countr}^, an interested party shall 
apply for registration in Norway, this application shall be considered, 
as regards the applications of others, as having been made simultane- 
ously with the application in the foreign countr}^ 

6. If, registration having been refused for the reason mentioned in 
article 4, paragraph 6, after the person who claims to have previously 
filed or registered such mark has been summoned before the tribunals, 
the applicant furnished proof that he was the original user of the 
trademark, but that another knowingly appropriated it, the tribunal 
may declare the applicant entitled to register the trademark, and to 
have the exclusive right to use the trademark for the goods on which 
he used it at the date on which reciprocity as to protection went into 



LAWS OF FOREIGN COUNTRIES, ETC. 281 

force. But the application in this regard shall not be received after 
six months after the date in question. 

7. Finall}^, as regards countries the trademark laws of which con- 
form to the provisions of the present law, the King- may decree that 
old marks duly registered in the country of origin and composed 
wholly or essentially of figures, letters, or words which are not dis- 
tinguished b}^ particular and striking form, shall enjoy, when they are 
protected in the foreign country, a special protection in Norway. It 
shall therefore be forbidden to any one to make use of the same figures, 
letters, or words as a mark for the same kind of merchandise, unless 
he had made such use of them before reciprocity as to protection went 
into force, provided that no one is prevented from using as a mark 
the initials of his name or of his firm name. Registration of a mark 
in order to have the efl'ect here indicated must be effected within a 
definite period, to be fixed by the King. 



Section 14. 
orange free state. 

(Not a party to the Convention.) 
PATENTS. 

(Law of 1888.) 

Art. -15. The exhibition of an invention at an international or indus- 
trial exhibition, or the publication of a description of the invention 
for the purposes of the exhibition in the place where the same is held, 
or the use of the invention during the holding of the exhibition by 
another person not authorized by the inventor elsewhere, shall not 
prejudice the right of the inventor or his legal representative to applj^ 
for and obtain provisional protection and letters patent for the inven- 
tion, nor the validity of the letters patent granted upon such applica- 
tion, provided that both the following conditions are complied with: 

(a) The exhibitor must, before exhibiting his invention, give the 
attorney-general written notice of his intention to do so. 

(5) His application for letters patent must be made before or within 
six months after the opening of the exhibition. 



Section 15. 
portugal. 

(a) PATENTS. 
(Law of December 15, 1894, as amended and finally adopted May 21, 1896.) 

Art. 9. An invention shall not be considered new if it has been 
described in any publication within one hundred years, or has been 
used in Portugal or its dominions in a public manner. 

The fact of the publication of descriptions, made by reason of the 
grant of a patent of invention in some foreign country allied with 



282 REVISION OF STATUTES RELATING TO PATENTS, ETC. 



Portugal by a special convention on this subject, shall not invalidate 
a patent granted in Portugal, except in the case of the application for 
this patent having been made to the Department of Industry after the 
expiration of the term of the right of priorit}^ fixed by the interna- 
tional convention in question. 

Art. 27. The right to the grant of the privilege of invention belongs 
to the first to present the application accompanied by the correspond- 
ing documents to the department of industry. 

The person who has regularly made an application for a privilege of 
invention in one of the countries allied with Portugal by a special con- 
vention on this subject shall, however, enjoy the right of priority for 
a patent in Portugal, reserving the rights of third parties during the 
term fixed by the international convention in question. 

Art. 29. Whoever has obtained a patent of invention in a foreign 
country allied to Portugal by a convention on this subject, may, if he 
makes a declaration to that effect, obtain an antedate for the patent, 
which shall be granted to him as of the date of the patent in the coun- 
try of origin. 

This provision, however, only applies in cases where the patent is 
applied for within the term fixed for the right of priority by the inter- 
national convention in question. 

(h) TRADEMARKS. 

(Law of December 15, 1894, as amended and finally adopted May 21, 1896.) 

Art. 77. The registration of international marks shall be effected in 
the terms of the convention of Madrid of the 14th of April, 1891, and 
ratified on the 11th of October, 1893. 



Section 16. 

QUEENSLAND. 

PATENTS. 

(British colony.) 
(Law of October 13, 1884.) 

Sec. 42. The exhibition of an invention at an industrial or interna- 
tional exhibition, certified as such by the minister, or the publication 
of any description of the invention during the period of the holding 
of the exhibition, or the use of the invention for the purpose of the 
exhibition in the place where the exhibition is held, or the use of the 
invention during the period of the holding of the exhibition by any 
person elsewhere, without the privity or the consent of the inventor, 
shall not prejudice the right of the inventor or. his legal personal 
representative to apply for and obtain provisional protection and a 
patent in respect of the invention or the validity of any patent granted 
on the application, provided that both the following conditions are 
complied with, namely: 

(a) The exhibitor must, before exhibiting the invention, give the 
registrar the prescribed notice of his intention to do so; and 

(b) The application for a patent must be made before or within six 
months from the date of the opening of the exhibition. 



LAWS OF FOREIGN COUNTRIES, ETC. 283 

[ (Act No. 8 of 1890. ) 

Sec. 12. It shall be lawful for the governor in council, by order in 
council, from time to time to declare that sections forty-two and fifty- 
seven of the principal act, or either of these sections, shall apply to any 
exhibition mentioned in the order, wherever held, in like manner as 
if it were an industrial, intercolonial, or international exhibition certi- 
fied by the minister, and to provide that the exhibitor shall be relieved 
from the conditions, specified in the said section, of giving notice to 
the registrar of his intention to exhibit, and shall be so relieved either 
absolutely or upon such terms and conditions as to the governor in 
in council may seem fit.] 

Sec. 80. (1) If Her Majesty is pleased b}" order in council to apply 
the provisions of the said one hundred and third section of the imperial 
act, called ''The patents, designs, and trade-marks act, 1883," to the 
colony of Queensland, then any person who has applied for protec- 
tion for any invention in England or in any foreign State, with the 
Government of which Her Majesty has made an arrangement under the 
said section for mutual protection of inventions, shall be entitled to a 
patent for his invention under this act, in priority to other applicants; 
and such patent shall take effect from the same date as the date of the 
ajpjplication^ in England or such foreign State, as the case may be. 

Provided^ That his application is made within twelve months from 
his applying for protection in England or the foreign State with which 
the arrangement is in force. 

Provided^ That nothing in this section contained shall entitle the 
patentee to recover damages for infringements happening prior to the 
date of the actual acceptance of his complete specification in this 
colony. 

(2) The publication in Queensland, during the periods aforesaid, of 
any description of the invention, or the use therein during such periods 
of the invention, shall not invalidate the patent which may be granted 
for the invention. 

(3) The application for the grant of a patent, under this section, 
must be made in the same manner as an ordinary application under 
this act. 

(4) The provisions of this section shall, in the case of foreign States, 
apply only in the case of those foreign States with respect to which 
Her Majesty shall from time to time, by order in council, declare the 
provisions of the aforesaid section of the said imperial act to be appli- 
cable, and so long only in the case of each State as the order in council 
shall continue in force with respect to that State. 



Section 17. 
south african republic. 

(Not a party to the Convention.) 
PATENTS. 

(Law of 1898.) 

Art. 51. The exhibition of an invention at an international or indus- 
trial exhibition, or the publication of a description of the invention 

*NoTE.— This word was substituted ior protection obtained by s. 8 of act No. 5 of 1886. 



284 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

during the period of the exhibition, or the use of the invention for the 
purposes of the exhibition in the place where the same is held, or the 
use of the invention during the holding of the exhibition by another 
person not authorized by the inventor elsewhere, shall not prejudice 
the right of the inventor or his legal representative to apply for and 
obtain provisional protection and letters patent for the invention, nor 
the validity of the letters patent granted upon such application, pro- 
Added that both the following conditions are complied with: 

{a) The exhibitor must, before exhibiting his invention, give the 
commissioner written notice of his intention to do so. 

{h) His application for letters patent must be made before or within 
six months after the opening of the exhibition. 



Section 18 

SPAIN. 

PATENTS. 

(Law of August 16, 1888. ) 

Art. I. Temporary protection for six months will be given to every 
invention, which can be the subject of a patent of invention, to all 
trademarks and to designs and industrial models shown in inter- 
national exhibitions official ly held in Spain or officially recognized as 
such. 

Aet. II. The term of six months shall be counted from the day on 
which the article was admitted into the exhibition. 

During the said term the exhibition, publication, or use without the 
permission of the inventor shall not prevent him or his representative 
from applying during the said six months for a patent of invention, 
protection for trademarks or for designs or industrial models referred 
to in Article I of this decree, nor from effecting the applications nec- 
essary for securing definite protection in all the countries which con- 
stitute the International Convention for the Protection of Industrial 
Property. 

Art. III. The said temporary protection shall be of no effect if the 
definitive patent be not applied for within the term of six months men- 
tioned above. 

Art. IV. A certificate of the said temporarj^ protection shall be 
issued without charge. 

Art. V. These certificates shall be issued by the ro3^al commissions 
of the exhibitions, who shall keep a register thereof and shall communi- 
cate them forthwith to the direction general of agriculture, industr}^ 
and commerce, by which they shall be published in the Madrid Gazette 
and the Official Journal of Intellectual and Industrial Property of the 
Ministry of the Interior. 

Art. VI. At the close of each exhibition the royal commission shall 
send the original register mentioned in the preceding article to the 
direction general of agriculture, industry, and commerce. 



Laws of foeeign countries, etc. 285 

Section 19. 

SWEDEN. 

(a) PATENTS. 

(Law of May 16, 1884, as amended March 26, 1897.) 

Art. 3. An invention shall not be considered as new if it has, prior 
to filing the application for a patent with the patent authorities, been 
so described in any printed publication to which the public has access, 
or is so openh^ worked that any person conversant with the subject 
ma}", guided by the information thus gained, work the invention-, or if 
the object of the invention does not essentially difier from products or 
methods of manufacture which have before become so known. 

Should an invention have been shown in an international exhibition, 
the fact that the invention has thereby or afterwards become known 
by a printed description, or through use of the invention, shall never- 
theless not be an obstacle to the granting ol: a patent, provided the 
application for it is lodged ^vithin six months after the exhibition of 
the invention. 

Art. 25. With regard to inventions protected in a State which 
grants reciprocity to inventions patented in the Kingdom the King 
may decree: 

That if any person applies for a patent in the Kingdom for an inven- 
tion before the expiration of a given time, which may be fixed by 
decree, but not to exceed seven months from the date of the applica- 
tion for protection of the same invention in the foreign State or three 
months from the publication b3'the competent authorities of the grant- 
ing of such protection, then the application made in the Kingdom shall 
be considered with reference to other applications and to the restric- 
tions mentioned in section 3 as if made simultaneously with the appli- 
cation in the foreign State. 

This law shall come into force January 1, 1898. 

(5) trademarks. 

(Law of July 5, 1884.) 

Art. 16. The King may decree, after the conclusion of a convention 
with a foreign country and on condition of reciprocity, that the pro- 
tection given to trademarks b}" the present law shall be equally 
accorded to those who, in a foreign countiw, are engaged in industry 
of the kind mentioned in Article I. The provisions of the law shall, 
in consequence, be applicable in such case, provided the following 
special regulations with reference to filing trademarks are observed: 

1. The application must be accompanied b}" a certificate showing 
that the applicant has complied with the formalities required in the 
foreign country for protection of his trademark. 

2. The interested party to whom registration has been granted shall 
have a representative domiciled in Sweden, who shall take action in 
his name in all matters relating to the mark; the former shall, as a 
consequence, be required, after the presentation of his application, 



286 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

whenever a change of representative is made, to state the name and 
domicile of the representative, under penalt}^ of having, in case it 
shall be stated that he has not observed this formality, the court, on 
the statement that may be made, officially designate a representative. 

3. The trademark is not protected to a greater degree or for a 
longer term than in the foreign country. 

In reference to trademarks registered in countries which accord the 
same privileges to Swedish trademarks, the King may make the 
following provisions: 

4. The trademark, if it is not contrary to moralit}^ or to public 
order, shall be registered in the form in which it is protected in the 
foreign country. 

5. Jf registration of a mark has been applied for before the expiration 
of a certain period, which may be fixed either at four months or more 
from the date on which the application for registration was filed in the 
foreign countr^^ or at three months or more from the date of pub- 
lication of the official announcement of the registration, the application 
filed in Sweden shall, relative to other applications, be considered to 
have been made simultaneously with the application in the foreign 
countr}^ 

6. If, registration having been refused for the reason mentioned in 
article 4, paragraph 5, after the person or persons who uses the trade- 
mark previously filed or registered has been summoned before the 
tribunals the applicant furnishes proof that the trademark was origi- 
nally used by him, but that another has appropriated it, the tribunal 
may declare the applicant entitled to register the trademark and to 
have the exclusive right to use it for the goods on which the provisions 
respecting reciprocal protection went into force. An application 
intended to have this effect shall not be receivable six months after 
the said date. 

7. All trademarks which have been regularly registered in a foreign 
country before the reciprocal protection went into force and which are 
composed wholly or principally of figures, letters, or words not capa- 
ble of being registered separately under the terms of article 4, shall 
have after their registration in Sweden, so long as they are protected 
in the foreign country, a special protection consisting in this, that 
others can not make use of the same figures, letters, or words as trade- 
marks for the same kind of goods, provided they have not alread}^ been 
used as such before reciprocal protection went into force. Neverthe- 
less the registration of these trademarks, except as concerns trade- 
marks for iron and for wood, prevent any one from using as a trade- 
mark the initials of his proper name or those of his commercial name. 



Section 20. 

SWITZEKLAND. 
PATENTS. 

(Law of June 29, 1888.) 



Art. 32. The citizens of countries which have concluded with Swit- 
zerland a convention to that effect ma}^, within the period of seven 
months from the date of application for a patent in one of the said 
countries, and reserving the rights of third parties, lodge their appli- 



LAWS OF FOREIGN COUNTRIES, ETO. 287 

cation in Switzerland, without circumstances which have take place in 
the interval, such as another application for a patent, or the fact of 
publication, l)eing' brought against the validity of their application for 
a patent. 

The same advantage shall be granted to Swiss citizens who have 
lodged their lirst application for a patent in one of the countries indi- 
cated in the preceding paragraph. 

Art. 33. There shall be granted to everv inventor of a patentable 
product exhibited in a national or international exhibition in Switzer- 
land, upon the fulfillment of the formalities to be prescribed by the 
Federal Council, temporar}^ protection for six months, commencing 
on the day of the admission of the product into the exhibition; during 
which term applications for patents which may be made or acts of 
publication which may take place shall not prevent the inventor from 
validly making within the said period the application for the patent 
necessar}^ for obtaining complete protection. 

When an international exhibition shall take place in a country which 
has concluded with Switzerland a convention to this effect, the tempo- 
rary protection granted b}^ the foreign country to patentable products 
exhibited in the said exhibition shall extend to Switzerland during a 
period not exceeding six months from the day of the admission of the 
product into the exhibition, and shall have the same effect as that men- 
tioned in the preceding paragraph. 



Section 21. 

TASMANIA. 
PATENTS. 

(Law of September 29, 1893.) 

Art. 65. The exhibition of an invention at any colonial, intercolo- 
nial, or international exhibition held at any place either within or 
beyond the colon}', and declared b}^ the governor in council by notifi- 
cation in the Gazette to be an "industrial exhibition" for the pur- 
poses of this act, or the publication of any description of the invention 
during the period of the holding of the exhibition, or the use of the 
invention for the purpose of the exhibition in the place where the 
exhibition is held, or the use of the invention during the period of 
the holding of the exhibition by an}^ person elsewhere, without the 
privity or consent of the inventor, shall not prejudice the right of the 
inventor or his legal personal representative to apply for and obtain 
provisional protection and a patent in respect of the invention, or 
the validity of any patent granted on the application, subject as fol- 
lows, namely: 

In the case of an exhibition held at any place within the colony — 

(1) The exhibitor must, before exhibiting the invention, give the 
registrar notice of his intention to do so; and 

(2) The application for a patent must be made before or within six 
months from the date of the opening of the exhibition. 

In the case of an exhibition held at any place outside the colony — 
The foregoing conditions shall also apply; but the governor in 
council may exempt, either absolutely or upon such terms and condi- 
tions as he shall think fit, an}' exhibitor from the conditions of giving 
previous notice to the registrar of his intention to exhibit. 



288 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Art. 106. (1) If Her Majesty is pleased, hj order in council, to 
apply the provisions of section 103 of the imperial act called "The 
patents, designs, and trade-marks act, 1883," to the colony of Tasmania, 
then any person who has applied for any protection for an}^ invention 
design, or trademark, in England or in any foreign State with the 
Government of which Her Majesty has made an arrangement under 
the said section for mutual protection of inventions, designs, or trade- 
marks, or any of them, shall be entitled to a patent for his invention 
or to registration of his design or trademark, as the case may be, 
under this act, in priority to other applicants; and such patent or 
registration shall take effect from the same date as the date of the 
application in England or such foreign State, as the case may be: 
Provided^ That his application is made, in the case of a patent, within 
twelve months, and in the case of a design or trademark within six 
months, from his applying for protection in England or the foreign 
State with which the arrangement is in force. 

Nothing in this section contained shall entitle the patentee or pro- 
prietor of the design or trademark to recover damages for infringe- 
ments happening prior to the date of the actual acceptance of his 
specifications or the actual registration of his design or trademark in 
this colony, as the case ma}^ be. 

(2) The publication in Tasmania during the respective periods afore- 
said of any description of the invention, or the use therein during such 
periods of the invention, or the exhibition or use therein during such 
periods of the design, or the publication therein during such periods 
of a description or representation of the design, or the use therein 
during such periods of the trademark, shall not invalidate the patent 
which may be granted for the invention or the registration of the 
design or trademark. 

(3) The application for the grant of a patent for the registration of 
a design or the registration of a trademark under this section must 
be made in the same manner as an ordinary application under this act, 
but in the case of trademarks, any trademark the registration of which 
has been duly applied for in the country of origin may be registered 
under this act. 

(4) The provisions of this section shall, in the case of foreign States, 
apply only in the case of those foreign States with respect to which 
Her Majesty shall, from time to time, b}^ order in council, declare the 
provisions of the aforesaid section of the said imperial act to be appli- 
cable, and so long onl}^ in the case of each State as the order in council 
shall continue in force with respect to that State. 



Section 22. 

VICTORIA. 
PATENTS. 

(Law of July 10, 1890. ) 

Sec. 65. Where Her Majesty has, by order in council, applied, or 
has signified her intention of applying, the provisions of section one 
hundred and three, or any portion thereof, of an act of the Imperial 
Parliament called "The Patents, Designs, and Trademarks act, 1883," 
as amended by any subsequent act, to Victoria, the provisions of the 



LAWS OF FOREIGN COUNTRIES, ETC. 289 

last preceding section may, by order of the Governor in Council, be 
applied for the protection of inventions patented in the United King- 
dom. Any such order in Council ma}^ be at any time revoked. 

Sec. 56. (1) Notwithstanding anything in any act of Parliament con- 
tained, where any patent or like privilege for the monopoly or exclu- 
sive use or exercise in an}^ parts out of Victoria of any invention first 
invented in parts out of Victoria has been obtained, a patent may be 
granted for such invention at an}^" time within one 3^ear from the date 
of the granting of the first of an}^ such patents or privileges, not- 
withstanding that such invention has been used or published in Vic- 
toria within such period of one year, and such patent, when granted, 
shall have the same force and efi'ect as if such prior publication or use 
had not taken place. 

(2) If such use or publication have been made in Victoria with the 
consent of the true and first inventor, for the time being such 
inventor shall not be entitled to a grant of letters patent under the 
authorit}" of this section. 

Sec. 62. The exhibition of an invention at an industrial or inter- 
national exhibition, or the publication of any description of the inven- 
tion during the period of the holding of the exhibition, or the use of 
the invention for the purpose of the exhibition in the place where the 
exhibition is held, or the use of the invention during the period of the 
holding of the exhibition by any person elsewhere without the privity 
or consent of the true and first inventor, shall not prejudice the right of 
the inventor or his legal personal representative to appl}^ for and 
obtain provisional protection and a patent in respect of the invention 
or the validity of any patent granted on the application, provided 
that both the following conditions are complied with, namely: 

(a) The exhibitor must, before exhibiting the invention, give the 
Commissioner one month's notice of his intention to do so; and 

(h) The application for a patent must be made before or within 
twelve months from the date of the opening of the exhibition. 



Section 23. 

WESTERN AUSTRALIA. 
PATENTS. 

(Law of October 10, 1894. ) 

Art. 3. (1) If Her Majesty is pleased, by order in Council, to apply 
the provisions of the said section 103 of the imperial act, called "The 
patents, designs, and trade-marks act, 1883," to the colony of Western 
Australia, then any person who has applied for protection for any 
invention, design, or trademark in England, or in any foreign State 
with the Government of which Her Majesty has made an arrangement 
under the said section for mutual protection of inventions, designs, or 
trademarks, or any of them, shall be entitled to a patent for his inven- 
tion, or to registration of his design or trademark (as the case may 
be) under this act, in priority to other applicants; and notwithstanding 
an3^thing contained in "the patent act, 1888," or "the designs and 
trademarks act, 1884," such patent or registration shall take effect 
from the same date as the date of the application in England or such 
foreign State (as the case maj^ be). 



290 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

(2) Such application shall be made in the case of a patent within 
seven months, and in the case of a design or trademark within four 
months from such person apphdng for protection in England or the 
foreign State with which the arrangement is in force, 

(3) Nothing in this section contained shall entitle the patentee or 
proprietor of the design or trademark to recover damages for infringe- 
ments happening prior to the date of the actual acceptance of his com- 
plete specification, or the actual registration of his design or trade- 
mark (as the case may be), in Western Australia. 

(-i) The publication in W estern Australia during the respective periods 
aforesaid of any description of the invention, or the use therein dur- 
ing such periods of the invention, or the exhibition or use therein 
during such periods of the design, or the publication therein during 
such periods of a description or representation of the design, or the 
use therein during such periods of the trademark, shall not invalidate 
the patent granted for the invention, or the registration of the design 
or trademark. 

(5) The application for the grant of a patent or the registration of 
a design or the registration of a trademark under this section shall be 
made in the same manner as an ordinary application under ''the patent 
act, 1888," or "the designs and trade-marks act, 188-1:" (as the case 
may be). 

(6) In the case of trademarks, any trademark the registration of 
which has been duly applied for in the country of origin ma}^ be 
registered under this act. 

(7) The provisions of this section shall, in the case of foreign States, 
apply only in the case of those foreign States with respect to which 
Her Majesty from time to time, by order in council, declares the pro- 
visions of the aforesaid section 103 of the said first recited imperial 
act to be applicable, and so long only in the case of each State as sueh 
order continues in force with respect to that State. 

Note. — The above extracts are taken from the patent laws of Brazil, 
Ceylon, Denmark, France, India, Orange Free State, Portugal, Queens- 
land, South African Republic, Spain, Sweden, Switzerland, and Vic- 
toria, as published in Patent Laws of the World, edition 1899 (Char- 
tered Institute of Patent Agents, London); from the patent laws of 
New South Wales, New Zealand, Tasmania, and Western Australia, 
and the trademark law of Portugal, as published in Supplements to 
Carpmael's Patent Laws of the World; from the patent law of Great 
Britain and the trademark laws of Brazil and Netherlands, as pub- 
lished in the Official Gazette of the United States Patent Office; from 
the French translation of the patent laws of Italy, Norway, and the 
trademark laws of Denmark, Norway, and Sweden, as published b}^ 
the International Bureau of Industrial Property at Berne in Recueil 
General de la legislation^ c&c, and in La Propriete Industrielle (trans 
lations); from an official copy of the patent law of Malta, and from 
translations of the patent and trademark laws of Japan. 



Chapter XII. 
LAW OF CANADA AS TO OATH BY APPLICANT FOE PATENT. 



CANADA. 

Law of 1892. 



Section eight of the patent act, chapter sixty-one of the Revised 
Statutes, is hereby repealed, and the following substituted therefor: 

* * •X- -X- * * * 

2. The third subsection of section ten of the said act is hereby 
repealed, and the following substituted therefor. 

" 3. Such oath or affirmation may be made before a minister pleni- 
potentiary, charge d'^affaires^ consul, vice-consul, or consular agent, a 
judge of an}^ court, a notary public, a justice of the peace, or the 
mayor of any cit}^, borough, or town, or a commissioner for taking- 
affidavits having authorit}^ or jurisdiction within the place where the 
oath may be administered." 

Note. — The above extract is taken from the patent law of Canada, 
as published in the Patent Laws of the World, edition 1899 (Chartered 
Institute of Patent Agents, London). 

291 



Chapter XIII. 
FOREIGN COUNTRIES WHICH HAVE PATENT LAWS. 



The following list of countries which at the present time provide by 
law for the grant of patents for inventions, with the dates of the laws 
at present in force, together with the statement following the list, is 
taken by permission from Greeley's Foreign Patent and Trademark 
Laws (Washington, 1899): 

Argentine Republic: Law of October 11, 1864. 

Austria: Law of June 11, 1897. 

Bahama Islands: Law of May 23, 1889; amended March 3, 1890, and June 5, 1891. 

Barbados: Law of December 12, 1883. 

Belgium: Law of May 24, 1854; amended March 27, 1857; amended July 5, 1884. 

Boh via: Law of May 8, 1858. 

Brazil: Law of October 14, 1882. 

British Guiana: Law of July 17, 1861; revised 1895. 

British Honduras: Law of September 10, 1862. 

British New Guinea: Law of 1842. 

British North Borneo: Law of March 17, 1887. 

British South Africa (Rhodesia, Mashonaland, and Matabeleland) : Law of Julv 6, 
1897. 

Canada: Law of June 14, 1872; amended July 9, 1892, and April 1, 1893. 

Cape Colony: Law of 1860. 

Ceylon: Law of November 21, 1892. 

Chile: Law of September 9, 1840; amended August 1, 1851; amended August 16, 
1856; amended July 25, 1872; amended January 20, 1883. 

Colombia: Law of May 13, 1869. 

Congo Free State: Law of October 29, 1886. 

Costa Rica: Law of June 26, 1896. 

Denmark: Law of April 13, 1894. 

Ecuador: Law of November, 3 1880. 

Fiji Islands: Law of 1879. 

Finland: Law of January 21, 1898. 

France: Law of July 5, 1844; amended May 23, 1856; amended May 23, 1868. 

French Indo-China: Law of June 24, 1893. 

Germany: Law of April 7, 1891. 

Great Britain, Statute of Monopolies of 1623: Law of August 25, 1883; amended 
June 25, 1886, and December 24, 1888. 

Guatemala: Law of December 17, 1897. 

Hawaii: Law of August 29, 1884; amended June 23, 1888; amended 1896. 

Hongkong: Law of April 1, 1892. 

Hungary: Law of July 14, 1895. 

India (British): Law of March 16, 1888. 

Italy: Law of October 30, 1859; amended January 31, 1864; amended August 4, 
1894; amended January 16, 1898. 

Jamaica: Law of 1857; amended May 27, 1891. 

Japan: Law of March 1, 1899. 

Leeward Islands: Laws of 1876 and 1878. • 

Liberia: Law of December 23, 1864. 

Luxemburg: Law of June 30, 1881. 

Malta: Law of 1899. 
292 



FOREIGN COUNTRIES WHICH HAVE PATENT LAWS. 293 

Mauritius: Law of 1875. 

Mexico: Law of June 7, 1890; amended June 22, 1896. 

Mysore: Law of 1894. 

Natal: Law of 1870; amended 1871; amended January 12, 1872, and 1884. 

Negri Sembilan : Law of April 9, 1896. 

Newfoundland: Title XV, Cap. LIV, Consolidated Statutes. 

New South Wales: Law of December 6, 1852; amended July 8, 1887; amended 
November 16, 1896; amended December 10, 1897. 

New Zealand : Law of September 2, 1889. 

Norway: Law of June 16, 1885. 

Orange Free State: Law of 1888. 

Perak: Law of April 29, 1896. 

Peru: Law of January 28, 1869; amended January 3, 1896. 

Portugal: Law of December 15, 1894; amended and finally adopted May 21, 1896. 

Queensland: Law of October 13, 1884; amended November 5, 1890. 

Kussia: Law of May 20- June 1, 1896. 

St. Helena: Law of 1872. 

Selangor: Law of March 21, 1896. 

South African Republic: Law of 1897. 

South Australia: Law of December 21, 1877; amended 1888. 

Spain: Law of July 30, 1878; August 16, 1888. 

Straits Settlements: Law of 1871. 

Sweden: Law of Mav 16, 1884; amended April 14, 1893; amended March 26, 1897, 
and Mav 28, 1897;' amended Mav 7, 1898. 

Switzerland: Law of June 29, 1888; amended March 13, 1893. 

Tasmania: Law of September 29, 1893. 

Trinidad and Tobago: Law of November 19, 1894. 

Tunis: Law of December 26, 1888. 

Turkey: Law of March 2, 1880. 

Uruguay: Law of November 11, 1885. 

Venezuela: Law of May 25, 1882; amended May 14, 1897. 

Victoria: Law of November 25, 1889; amended July 10, 1890. 

Western Australia: Law of November 26, 1888; amended 1892, and October 10, 
1894. 

In a number of countries other than those above named protection for inventions 
may be obtained by special legislative or government grant. Such protection, what- 
ever its effect, is hardly to be classed with that afforded by a general law, and is 
rather in the nature of a monopoly created by a government concession for commer- 
cial purposes. 

In the list above given, in which patent laws are in force to-day, are found nearly 
all the countries of the world which are of industrial importance. But one country 
in the world, the Netherlands (Holland), which has once adopted a patent law is 
without such law to-day. The recent date of so large a proportion of the laws given 
in the list is not to be understood as indicating, except in case of comparatively few, 
and those not the more important, that these countries were without patent laws up 
to the date given. These new laws, in the case of the older and more important 
countries, take the place of laws which have been in force for many years. 



Chapter XIV. 

LAWS OF CERTAIN FOREIGN COUNTRIES REQUIRING NONRESI- 
DENT APPLICANTS FOR PATENT AND FOR REGISTRATION OF 
TRADEMARKS TO PLACE THEMSELVES WITHIN THE JURIS- 
DICTION OF THE COURTS OF THE COUNTRY. 



Section 1. 

AUSTRIA. 

(Not at present a party to the Convention.) 

PATENTS. 

(Law of January 11, 1897.) 

Sec. 7. Any person not residing in the country may only claim the 
grant of a patent and the rights resulting therefrom if he has a repre- 
sentative residing in the country. 

The name and residence of this representative, and also ever}^ change 
in the representation, shall, together with the power of attorney, be 
lodged at the patent office for entry in the register of patents. 

It shall be determined by regulations what the power to be deposited 
at the patent office shall contain. 

The place at which the representative has his residence, and in default 
of the same the place at which the patent office has its seat, shall serve 
for the business concerning the patent as residence of a patentee not 
residing in the country. 

Delivery to the representative shall have the same legal effect as if 
it had been to the patentee himself. 



Section 2. 

BRAZIL. 

patents. 

(Law of October 14, 1882.) 

Art. V. Sec. 2. The patent shall lapse in the following cases: 

* * * * * * * 

4. If a patentee residing out of the Empire does not appoint an 
attorney to represent him before the Government or in court. 



LAWS EESPECTING NONRESIDENT APPLICANTS. 295 

SECTtON 3. 

CANADA. 

(British colony. — Not at present a party to the Convention.) 

PATENTS. 

(Law of June 14, 1872.) 

Art. XII. The petitioner for a patent siiall, for all the purposes of 
this act, elect his domicile at some known and specified place in Canada, 
and mention the same in his petition for a patent. 



Section 4. 

CEYLON. 

(British colony. — Not a party to the Convention.) 

PATENTS. 

(Law of 1892.) 

11. (1) Another book, to be called the " Address Book," shall be kept 
in the office of the colonial secretary, wherein any person or persons 
filing a specification under this ordinance, or any person or persons in 
whom an exclusive privilege acquired under this ordinance, or any 
share or interest therein, may become vested, may from time to time 
cause to be stated some place in the colony where notice of any rule 
or proceeding relative to the exclusive privilege may be served on 
him or them. 



Section 5. 

DENMARK. 
(a) PATENTS. 

(Law of April 13, 1894.) 

Sec. 13. If the applicant does not reside in this country, the appli- 
cation shall be accompanied b}^ a statement by the applicant to the 
effect that an attorney residing in this country is to represent him in 
all matters concerning the patent, and thus especially on his behalf to 
accept notices in legal actions which may be brought against him under 
this law; the said statement shall have an endorsement by the attorney 
that he accepts the power of attorney. 

Sec. 23. A patent lapses: 

****** * 

(2) When the holder of the patent goes to reside outside the realm, 
or the patent is assigned to a person residing outside the realm, unless 
a statement appointing an attorney, as prescribed in section 13, is 
lodged with the patent commission within six weeks thereof. 
S. Doc. 20 20* 



296 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

(3) When the attorney whose name has been given to the patent 
commission by the holder of the patent no longer will or can attend 
to the duties of attorney, and the holder of the patent after being 
informed thereof by registered letter from the patent commission, or, 
if his place of residence be unknown after being notified by advertise- 
ment, shall not within a term fixed by the commission lodge a state- 
ment appointing a new attorney. 

{h) TRADEMARKS. 

(Law of April 11, 1890.) 

Art. 14. The king may decree, under condition of reciprocity, that 
the protection for trademarks given by the present law shall be equally 
accorded to those engaged, in a foreign country, in industry of the 
kind mentioned in article 1. The provisions of the present law shall 
in consequence be applicable in such case provided the following rules 
with reference to the filing of trade-marks are observed: 

* * * * * * -x- 

2. The applicant shall submit to the jurisdiction of the maritime and. 
commerce tribunal of Copenhagen and designate a representative domi- 
ciled in the country who shall take action in his name. 



Section 6. 

FINLAND. 

(Not a party to the Convention.) 
{a) PATENTS. 

(Law of January 21, 1898. ) 

Sec. 6. Any person wishing to obtain a patent shall make written 
application therefor to the Industrial Board. The application shall 
contain the title of the invention and particulars of the calling and 
address of the applicant, and shall be accompanied by; -^ * * when 
the applicant resides out of the country, a power for an attorney resi- 
dent within the country to speak and act for the applicant in every- 
thing concerning the patent; the calling and address of the attorney 
should also be given. 

(h) TRADEMARKS. 
(Law of February 11, 1889. ) 

Sec. 9. Any merchant of a country in which citizens of Finland 
enjoy similar privileges, may, by conforming to the regulations in ref- 
erence to trademarks in force in the Grand Duch}^, register a trade- 
mark which he has previousl}^ registered in his own country, and 
obtain protection therefor in Finland. 

In applying for registration "^' * * further, he must indicate the 
name of a representative resident in the Grand Duchy, who shall rep- 
resent him in all matters relative to the trademark. 



LAWS EESPECTING NONRESIDENT APPLICANTS. 297 

Section 7. 

GERMANY. 

(Not a party to the Convention.) 

(a) PATENTS. 

(Law of May 26, 1891.) 

Sec. 12. Aii}^ person not residing within the realm can only claim 
the grant of a patent, and the right accruing therefrom, if he has 
appointed a representative within the realm. The latter is empowered 
to represent the applicant in all proceedings under this law, as also in 
all civil litigation concerning the patent and actions for penalties or 
damages. The place where the representative resides, and in the 
absence of such a residence, the place where the patent office is located, 
is to be taken as the place of jurisdiction, according to section 24 of 
the law on civil actions. 

With the consent of the Federal Council the Imperial Chancellor can 
decree that a right of retaliation shall be put in force against the citi- 
zens of a foreign State. 

(h) TRADEMARKS. 

(Law of May 12, 1894.) 

Sec. 23. A person not having an establishment in Germany can have 
a claim to the protection of this law only when, according to a publica- 
tion in the Reichs Gesetz Blatt^ the State in which his establishment is 
situated accords to German merchandise marks protection to the same 
extent as to domestic marks. 

The protection of a merchandise mark and the rights resulting from 
registry can be claimed only through the medium of a proxy residing 
in the countr3\ Such proxy shall have power to represent his princi- 
pal in the proceedings before the Patent Office under this law, as well 
as in civil actions concerning the mark; he shall also be empowered 
to institute penal actions. Either the court within whose protection 
the proxy is domiciled or that of the place where the Patent Office is 
situated is competent to try suits against the registered owner of a 
mark. 



Section 8. 

GREAT BRITAIN. 
TRADEMARKS. 

(Patents, Designs, and Trademarks act, 1883, as amended December 24, 1888.) 

Sec. 62 (6). Where the applicant for the registration of a trade- 
mark otherwise than under an international convention is out of the 
United Kingdom at the time of making the application, he shall give 
the comptroller an address for service in the United Kingdom, and if 
he fails to do so the application shall not be proceeded with until the 
the address has been given. 



298 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Section 9. 

GBEEGE. 

TRADEMARKS. 

(Law of January 16, 1893.) 

Art. XIII. Foreigners and Greek subjects carrying on their indus- 
try or commerce outside of Greece shall enjoy the benefit of this law, 
if in the country where they are located there is a law for the protec- 
tion of trademarks and a diplomatic convention for the reciprocal pro- 
tection of Greek trademarks. Provided that it shall be necessary for 
the enjoyment of this privilege in Greece, besides the deposit of the 
mark, first, to produce a certificate from competent local authority, 
authenticated by the Greek consul, establishing the fact that the 
formalities required by the laws of the applicant's country to secure 
protection of the mark have been complied with; second, to elect 
before a notary a domicile at Athens; to declare in writing that the 
applicant submits to the jurisdiction of the Athenian Tribunals. 



Section 10. 

HUNGARY. 

(Not a party to the Convention.) 
PATENTS. 

(Law of July 7, 1895. ) 

Sec. 15. A person not normally residing in the country can obtain 
a patent, and exercise the rights originating therefrom, only after 
Appointing, by a special power of attorney duly legalized and lodged 
in the Patent OfiSce, a representative residing in the country. 

Such representative is authorized to represent his client before the 
patent authorities and courts of law, to lodge requests relating to the 
application, to keeping in force the patent, to instituting penal pro- 
ceedings, and to receive decisions on complaints and other decisions. 

For actions against owners of patents residing abroad the court 
within the jurisdiction of which the representative has his residence is 
competent, or, if the owner has no representative, the court which has 
the seat of the Patent Office within its jurisdiction. 

If the representative of the owner of a patent residing abroad 
renounces the power of attorney conferred upon him, or if he can not 
be found, and the owner of the patent has not appointed a new repre- 
sentative, or if the owner of the patent residing in the country settles 
abroad or can not be found, the patent authorities and the courts of 
law appoint a curator to represent the owner of the patent. 



laws respecting nonresident applicants. 299 

Section 11. 

INDIA. 

(British colony.— Not a party to the Convention.) 

PATENTS. 

(Law of 1888.) 

13. (1) Another book, to be called the Address Book, shall be kept 
in the Office of the Secretary, wherein any person filing a specifica- 
tion under this part, or any person in whom an exclusive privilege 
acquired under this part, or any share or interest therein may become 
vested, may from time cause to be stated some place in British India 
where notice of any rule or proceeding relating to the exclusive privi- 
lege may be served on him. 



Section 12. 

JAPAN. 
(a) PATENTS. 

(Law of March 1, 1899.) 

Art. VI. Any person desiring to make an application or petition in 
regard to a patent, or any owner of a patent, not domiciled in the 
Empire, shall appoint a person domiciled in the Empire to be his agent. 

Such agent shall represent his principal in any proceedings taken in 
the Patent Bureau which are provided for by this act or provided for 
by ordinances issued under this act, and in civil actions or criminal 
prosecutions relating to patents. 

Art. VII. The President of the Patent Bureau may direct the 
appointment of another agent whenever in his opinion the agent 
appointed for the purpose relating to the patent is not satisfactory. 

Art. VIII. Any person making agency in matters relating to 
pafents, his profession shall be registered in the Patent Bureau. 

The regulations regarding the registration of patent agents shall be 
prescribed by ordinance. 

■X- * * * * * * 

Art. XXXVm. The President of the Patent Bureau shall have the 
power to annul a patent under the following circumstances : 

* * * * -X- * * 

{c) When the owner of a patent has, without reasonable cause, failed 
for more than six months to appoint and maintain the grant provided 
for in Article VI. 

(h) TRADEMARKS. 
(Law of March 1, 1899.) 

Art. XX. The provisions of the patent act, Articles VI-X * * * 
shall apply to trademarks. 



300 REYISION OF STATUTES RELATING TO PATENTS, ETC, 

Section 13. 
ltjxembtirg. 

(Not a party to the Convention.) 

(a) PATENTS. 

(Law of June 30, 1880. ) 

Art. 9. No one can obtain a patent nor exercise rights under a 
patent unless he has elected domicile in the Grand Duchy. If he is a 
foreigner, he must elect domicile with some one holding a power to 
represent him, and to whom all communications may validly be made. 
The domicile elected determines jurisdiction, and will be valid so long- 
as it is not replaced by a new election of domicile in the form pre- 
scribed by article 13. 

(h) trademarks. 

(Law of May 30, 1883. ) 

Art. 6. Foreigners and citizen of Luxemburg, who, in accordance 
with the provisions of article 9, section 2, of the foregoing law, wish 
to enjoy the benefit of this law, must, in addition to complying with 
the formalities above set forth, elect domicile in the Grand Duchy. 

Mention of this election, which shall be determinative of jurisdiction 
as well as of the diplomatic convention by which reciprocity is estab- 
lished, must be made in the written statement filed. 



Section 14. 

MYSORE. - 

(Not a party to theX^oiavention.) 

PATENTS. 

(Law of 1894.) 

Sec. 13. (1) Another book, to be called the address book, shall be 
kept in the oflice of the chief secretary, wherein any person filing a 
specification under this part, or any person in whom an exclusive priv- 
ilege acquired under this part, or any siiire or interest therein, may 
become vested, may from time to time cause to be stated some place 
in the Territories of Mysore where notice of any rule or proceeding 
relating to the exclusive privilege may be served on him. 



Section 15. 
negri sembilai^t. 

(Dependency of Great Britain.— Not a party to the Convention.) 

PATENTS. 

(Law of April 9, 1896.) 

Sec. 22. A book shall be kept in the office of the British resident 
(such book to be open to inspection without fee) wherein every 



LAWS RESPECTING NONRESIDENT APPLICANTS. 301 

person filing a specification shall cause to be stated, under a num- 
ber corresponding with the number of the specification, some place 
in the State where service of any orders or proceedings for the pur- 
pose of canceling or revoking his grant of exclusive privilege, or of 
an}^ other process, maj^ be made. Any person, partnership or com- 
pan}^ from time to time being proprietors of or having shares or inter- 
ests in such exclusive privilege, shall cause to be entered in such book, 
under such number as aforesaid, their names, together with the name 
of some place for the service of such orders, proceedings, and processes 
as aforesaid; and all such orders, proceedings, and processes shall be 
deemed sufficiently served on any such person, partnership, or company 
if a cop3^ thereof be left at the place entered in such book, or (if any 
other place be substituted for the same by entr}^ in the said book) at 
the place last substituted, by delivering the same to an^^ person resident 
at or in charge of such place; or, if there be no person resident at or 
in charge of such place, and if an}^ such person, partnership, or com- 
pany shall neglect to make or cause to be made such entry, then service 
of such order, proceeding, or process ma}^ be effected b}" affixing a copy 
thereof in such other manner as the court ma}" direct. 

The same provision is found in the law of April 29, 1896, of Perak, 
section 22, and in the law of March 21, 1896, of Selangor, section 22. 



Section 16. 
netherlands, 
trademarks. 

(Law of September 13, 1893.) 



Art. 11. All persons who have no domicile within the Kingdom in 
Europe, on sending in the marks mentioned in article 1 or article 7, 
and on presenting petitions according to articles 9, 10, or 13, must 
select domiciles within the Kingdom. 

All summonses shall be served at the domiciles selected. 



Section 17. 

NORWAY. 
{a) PATENTS. 

(Law of June 16, 1885. ) 

Sec. 13. If the applicant does not reside in Norway, etc., he must 
appoint in his petition an attorney resident in the country to represent 
him in all matters relating to the patent who may be summoned in his 
place. An attested cop}^ of the power of attorney appointing the 
representative, and accepted by him, shall be annexed to the petition. 

An application which is not signed by the applicant himself must be 
accompanied b}^ a proper power of attorney in favor of the person 
who has signed it. 

Sec. 25. A patent becomes void: 



302 REVISION OF STATUTES RELATING TO PATENTS, ETC. 



(2) If the appointed attorney no longer can or will discharge his 
duties, and the patentee does not register with the patent commission 
a new attorney within three months after being warned by advertise- 
ment in the gazette designed for such publications. 

(h) TRADEMARKS. 

(Law of May 16, 1885.) 

Art. 15. The King maj^ decree, under condition of reciprocity, that 
persons in a foreign country engaged in industries such as are enumer- 
ated in article 1 shall likewise be accorded the protection of the pres- 
ent law. The provisions of the present law are applicable in such 
cases, provided the following special regulations respecting the filing 
of the trademarks are complied with: 

******* 

(2) In all matters respecting the trademark the applicant shall 
acknowledge the jurisdiction of the court of Christiania, and shall 
designate a representative domiciled in the country, who shall be 
empowered to act in his name. 



Section 18. 

RUSSIA. 

(Not a party to the Convention. ) 

patents. 

(Law of May 20- June 1, 1896.) 

Art. 5. Whoever wishes to obtain a patent of invention or of 
improvement must send in person or by an agent a petition. * * * 
If the petitioner is domiciled abroad, his application must be presented 
by an agent domiciled in Russia. 



Section 19. 
south african republic. 

(Not a party to the Convention.) 

TRADEMARKS. 

(Law of May 31, 1892.) 



Art. 1. * * * Any person not having domicile in the country may 
effect the deposit for registration through a representative appointed 
by a written power of attorney, domiciled in the country at whose 
house the applicant must elect his domicile. 



LAWS RESPECTING NONRESIDENT APPLICANTS. 303 

Section 20. 

STRAITS SETTLEMENTS. 

(British colony— Not a party to the ConventionO 

PATENTS. 

. ' (Law of 187L) 

Art. 23. A book shall be kept in the office of the colonial secretary 
(such book to be open to inspection without fee), wherein ever}^ person 
filing a specification under this ordinance shall cause to be stated, under 
a number corresponding with the number of the specification, some 
place in the Settlement where service of any rules or proceedings for 
the purpose of cancelling or revoking his exclusive privilege, or of any 
other process, may be made. Any person, partnership, or company, 
from time to time, being proprietors of, or having shares, or interests 
in, such exclusive privilege, shall cause to be entered in such book, 
under such numbers as aforesaid, their names, together with the name 
of some place for the service of such proceedings and process as afore- 
said. All such rules, proceedings, and process shall be deemed suffi- 
ciently served on any such person, partnership, or company, if a copy 
thereof be left at the place entered in such book, or (if any other place 
be substituted for the same by entry in said book) at the place last sub- 
stituted, by delivering the same to any person resident at or in charge 
of such place; or if there be no person resident at or in charge of such 
place, and if such person, partnership, or company shall neglect to 
make or cause to be made such entry, then service of such rule, pro- 
ceeding, or process may be effected by affixing a copy thereof to a con- 
spicuous part of the supreme court house, or in such other manner as 
the court may direct. 



Section 21. 

SWEDEN. 
(a) PATENTS. 

(Law of May 16, 1884. ) 

Sec. tt. If the applicant be not resident in the country, he must 
attach to the application an authorization for someone residing within 
the Kingdom to act as his representative, empowered to answer for 
him in all matters concerning the patent. 

Sec. 13. If the holder of the patent go abroad, or the patent be trans- 
ferred to a person not residing in the Kingdom, the holder of the pat- 
ent shall be required to send in to the patent authority the power of 
attorney for a legal representative, as mentioned in section 4, first 
section. If the representative of the holder of the patent leave his 
country or his charge otherwise cease, the holder of the patent shall 
send in a power of attorney for a new representative. If no notice be 
taken of what in this manner is ordered, a judge can, on being notified 
of the facts of the case, effect the selection of a deputy for the holder 
of the patent. 



304 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

(b) TRADEMARKS. 

(Law of July 5, 1884.) 

Art. 16. The King may decree, after a convention with a foreign 
State, and on condition of reciprocity that the protection for trade- 
marks given by the present law shall be equally accorded to those who 
are engaged in a foreign country in an industry of the kind mentioned 
in article 1. The provisions of the present law shall be applicable in 
such case, provided the following special regulations which concern 
the filing of marks are complied with: 



(2) The interested person to whom registration shall be granted shall 
have a representative domiciled in Sweden, who shall carry on in his 
name all matters concerning the trademark; he shall be required in 
consequence, after the presentation of the application as regards any 
change in representative, to state the name and domicile of the repre- 
sentative under penalty, in case he does not observe this requirement, 
that the court, in accordance with such information as may be pre- 
sented, shall designate a representative. 



Section 22. 

SWITZERLAND. 



patents. 

(Law of June 29, 1888. ) 

Art. 11. A person not domiciled in Switzerland shall not be able to 
claim the delivery of a patent and the enjoyment of the rights result- 
ing therefrom until he has nominated an attorney domiciled in fcjwitzer- 
land. The latter is authorized to represent him in all steps to be taken 
according to the tenor of the present law, as well as in proceedings con- 
cerning the patent. 

The tribunal in whose jurisdiction the representative is domiciled 
shall be competent to try actions brought against the proprietor of the 
patent, or in default that in the jurisdiction of which the federal office 
is situated. 



Section 23. 

TUjIKEY. 

(Not a party to the Convention.) 

PATENTS. 



(Law of March 2, 1880.) 

Art. 5. Whoever shall desire to obtain a patent of invention shall 
deposit, in a sealed envelope, if in Constantinople, at the Ministry of 



LAWS RESPECTING NONRESIDENT APPLICANTS. 305 

Commerce and Agriculture, and if in the provinces at the Office of the 
Provincial Government, or if he prefers it, at the said ministry: 

1. His application for a patent of invention. 

2. A specification of his invention. 

3. The drawing or samples illustrating the description. 

4. A memorandum of the papers deposited. 

If the applicant complies with these formalities in a place where he 
is not domiciled, he must elect domicile there. 

Note. — The above extracts are taken from the patent laws of Aus- 
tria, Brazil, Ceylon, Denmark, Finland, Germany, Hungary, India, 
Luxemburg, Mysore, Negri Sembilan, Norway, Straits Settlement, 
Switzerland, and Turke}^, as published in Patent Laws of the World, 
edition 1899 (Chartered Institute of Patent Agents, London); from 
the patent laws of Canada, Russia, and Sweden, and the trademark 
laws of Germany, Greece, and Netherlands, as published in the Official 
Gazette of the United States Patent Office; from the French transla- 
tion of the patent law of Sweden and the trademark laws of Denmark, 
Finland, Luxemburg, Norway, South African Republic, and Sweden, 
as published by the International Bureau of Industrial Property at 
Berne, in Recueil General de la legislation^ etc. ; and from a transla- 
tion of the patent and trademark laws of Japan. 



Chapter XV. 

LAWS or CERTAIN FOREIGN COUNTRIES EXCLTIDINQ FROM 
PATENT PROTECTION CERTAIN CLASSES OF INVENTION. 



Section 1. 
argentine republic. 

(Law of October 11, 1864. ) 

Art. 4. The following are not patentable: Pharmaceutical composi- 
tions; financial schemes; discoveries or inventions which have prior to 
the application been sufficiently made public, in this country or out of 
it, in works, pamphlets, or printed periodicals, to enable them to be 
carried out; those which are purely theoretical, without their indus- 
trial application being indicated; and those which are contrary to 
morality or the laws of the Republic. 



Section 2. 

AUSTRIA. 

(Law of June 11, 1897.) 

Sec. 2. Patents shall not be granted: 

1. For inventions the object or use of which is contrary to law or 
morality or injurious to health, or which are obviously intended to 
mislead the public. 

2. For scientific doctrines or principles as such. 

3. For inventions the subject of which is reserved for a State 
monopoly. 

4. For inventions concerning — 

(a) Articles for human food and consumption. 

(h) Preparations for medicine or disinfection. 

(c) Products which are obtained by chemical methods, in so far as 
the inventions mentioned in paragraph 4, (a) to (c), do not relate to a 
definite technical process for the production of such articles. 

Sec. 8. * * * If the patent be granted for a process, the effect 
shall extend also to the articles made directly by this process. 
306 



INVENTIONS NOT PATENTABLE ABROAD. 307 

Section 3. 

DENMARK. 

(Law of April 13, 1894.) 

Sec. 1. Patents are granted for inventions which can be industrially 
utilized or the carrying out of which can be made the object of indus- 
trial gain. 

The following are, however, not patentable: 

(1) Inventions which, as such, can not be considered to be of any sub- 
stantial importance. 

(2) Inventions the exercise of which is contrary to law, morality, or 
public order. 

(3) Inventions which at the date of the application for the patent 
have already been so described in some generally accessible print, or 
been brought so openly into use in this country that experts are thereby 
enabled to exercise them; and 

(4) Inventions of medicines and articles of food or refreshment and 
of processes for the production of articles of food. 



Section 4. 

FINLAND. 

(Law of January 21, 1898.) 

Sec. 1. A patent may be obtained for new inventions which can be 
used in industrial operations. 

A patent may not be granted for an invention the use of which is 
contrary to law or morality. 

If an invention has for object any article of food or medicine or a 
composition produced by a chemical process, a patent may not be 
granted for the commodity itself, but only for the particular method 
of manufacturing it. 



Section 5. 

FRANCE. 

(Lawof July 5, 1844.; 



Art. 3. The following are not patentable: 

1. Pharmaceutical compositions or medicines of all kinds, the said 
objects remaining subject to the special laws and regulations for these 
matters, and especially to the decree of the 18th of August, 1810, 
relating to secret remedies. 

2. Schemes and combinations relating to credit or finance. 



308 REVISION OF STATUTES EELATINO TO PATENTS, ETC. 

Section 6. 

GEEMANY. 

(Law of April 7, 1891.) 

Sec. 1. Patents are granted for new inventions which allow of 
industrial application. 
Excepted are: 

(1) Inventions the application of which is contrary to the laws or 
public morals. 

(2) Inventions relating to articles of food, whether for nourishment 
or for enjoyment, and medicines, as also substances prepared by 
chemical processes in so far as the inventions do not relate to a definite 
process for the preparation thereof. 

Sec. 35. * * * If the invention relates to a process for the pro- 
duction of a new substance, all substances of like nature are considered 
as having been made by the patented process until proof to the con- 
trary is given. 



Section T. 

HUNGARY. 

(Law of July 14, 1895. ) 

Sec. 2. A patent can not be allowed for an invention: 

1. The working of which is contrary to a law, or an ordinance, or 
to public morals; 

2. Which relates to arms for war purposes, explosives, ammunition, 
fortifications or ships of war necessary for increasing the belligerent 
power of the Austro- Hungarian army, the navy or the Hungarian 
militia, provided the Minister of Commerce enters an opposition against 
the grant of such patent within the term named in the second paragraph 
of section 34; 

3. For scientific theorems or principles as such; 

4. For articles serving for human or animal nourishment, for medi- 
cines and articles produced by chemical processes; the process employed 
in making such articles can, however, be patented. 

Sec. 8. * * * The effect of a patent granted for a process extends 
also to the products produced by such process. 



Section 8. 

ITALY. 

(Law of October 13, 1859.) 

Art. 6. The following do not constitute subjects for patents: 

1. Inventions or discoveries relating to industries contrary to law, 
morals, or public safety. 

2. Inventions or discoveries which have not for their object the pro- 
duction of material objects. 

3. Inventions or discoveries of a merely theoretical nature. 

4. Medicines of whatever kind. 



inventions not patentable abroad. 309 

Section 9. 

JAPAN. 

(Law of March 1, 1899.) 

Art. II. Patents can not be obtained for the following inventions: 
(a) Those regarding food, liquor, or any other kind of refresh- 
ments; 

(h) Those regarding medicine or the compounding thereof; 

(c) Those capable of offending public order or good morals; 

(d) Those publicly known or used before applications for patent are 
filed, excepting, however, those publicly known for no more than two 
years on the consequence of experiment. 

Art. 1. * * * A patent for the invention of a process grants to 
the patentee the exclusive right of using and exploiting the process 
and the effect of such patent extends to the products made by that 
process. 



Section 10. 

LUXEMBUEG. 

(Lawof June 30, 1880.) 

Art. 1. Patents will be granted for new inventions capable of being 
worked industrially, excepting: 

1. Inventions of which the working would be contrary to law or 
morals. 

2. Inventions which have for their object food or other articles of 
consumption, pharmaceutical products or substances obtained by chem- 
ical means, unless they relate to definite processes for the manufacture 
of these articles. 



Section 11. 

NORWAY. 

(Law of June 16, 1885.) 

Sec. 1. Patents shall be granted for new inventions which may be 
beneficial to industry. 

The following are excepted: 

(a) InA^entions the use of which would be contrary to law, morality, 
or public order. 

(J)) Inventions the object of which are articles of food, nourishment, 
or medicine; but a patent ma}^ be granted for a process or apparatus 
specially designed for manufacturing such articles. 



31© 

Section 12. 

PERU. 

(Law of January 28, 1869.) 

Art. 3. The following shall not be included in this privilege: 

1. Pharmaceutical preparations or remedies of an}^ kind whatsoever. 

2. Schemes or combinations of credits or funds; and 

3. Processes, the object of which is to establish known means for 
improving an industry the practice of which is free in or out of the 
republic. 

Section 13. 
portugal. 

(Law of December 15, 1894.) 

Art. 10. Patents granted for chemical industries shall refer only to 
the processes, and not to the products themselves, which might be 
prepared by other means. 

Art. 11. Pharmaceutical preparations and remedies intended for 
human use or for animals can not be the subjects of patents of inven- 
tion, but only the processes for the manufacture of such preparations 
or remedies. 



Section 14. 

RUSSIA. 

(Law of May 20-June 1, 1896.) 

Art. VI. Article 176 of the industrial law (Codified Laws, Vol. VI, 
part 2, issue of 1893) will remain temporarily in force. 

(This article is as follows: 

''Patents of invention and improvements relating to munitions of 
war and to the defense of the State which can only be used by the 
Government, such as pieces of artillery, projectiles, fuses, and other 
artillery accessories, armor plates, torpedoes, revolving turrets, etc. , 
can not be granted. For inventions and improvements relating to 
articles used in the army, but which can also be employed by private 
persons, such as small arms, metallic cartridges, bullets, and other 
accessories to such weapons, patents may be granted on the condition 
that they shall have no force against the ministries of war and the navy 
and shall not preclude such ministries from using the above-mentioned 
inventions and improvements or from carrying out the necessary 
experiments.'') 

Art. 4. Patents can not be granted for inventions and improve- 
ments — 

(a) Which consist of scientific discoveries and abstract theories. 

(h) Which are contrary to public order, morals, and decenc}^ 

(c) Which, prior to the date when the application for the patent was 
lodged, have been patented in Russia or have been used there without 



INVENTIONS NOT PATENTABLE ABROAD. 311 

a patent, or which have been described in printed books or journals in 
sufficient detail to enable them to be reproduced. 

{d) Which are known abroad without a patent, or which are pat- 
ented there in the name of a person other than the applicant, except 
in the case in which the invention has been assigned to the latter. 

{e) Which do not involv^e any sufficiently essential novelty (art. 3), 
but onl}^ insignificant modifications of inventions and improvements 
already known. 

Further, no patent is granted for chemical, nutritious, and gustatory 
products, for medical compounds, or for processes and apparatus for 
the manufacture of the latter. 



Section 15. 

SPAIN. 

(Law of July 30, 1878.) 

Art. 9. The following shall not be the objects of patents: 

1. The result or product of the machines, apparatus, instruments, 
processes, or operations mentioned in the first paragraph of article 3, 
unless they are contained in the second paragraph of the same article. 

2. The use of natural products. 

3. Scientific principles or discoveries so far as they are of a mere 
speculative nature and are not likely to be applicable to machinery, 
apparatus, instruments, processes, or mechanical or chemical opera- 
tions of a practical industrial nature. 

4. Pharmaceutical or medical preparations of all sorts. 

5. Schemes or combinations of credit or finance. 



Section 16. 

SWEDEN. 

(Law of May 16, 1884.) 

Sec. 2. Patents shall not be granted for inventions, the working of 
which would be contrary to law or morals. With regard to inventions 
relating to provisions or medicines, patents shall not be granted for 
the commodity itself, only for special methods for its manufacture. 



Section 17. 
switzerland. 

(Law of June 29, 1888.) 

Art. 1. The Swiss Confederation grants to the authors of new inven- 
tions applicable to industry and represented by models, or to their 
assigns, the rights specified in the present law in the form of patents 
of invention. 

S. Doc ^0 21* 



312 EEVISION OF STATUTES EELATING TO PATENTS, ETC. 

Section 18. 

TUNIS. 
(Law of December 26, 1888.) 

Art. 3. The following shall not be patentable: 

Schemes and combinations relating to credit or finance, and inven- 
tions the practice of which would be contrary to law or morality. If 
the invention relates to foods or medicines, the patent shall not be 
granted for the product itself, but only for special processes relating 
to its manufacture. 



Section 19. 

TURKEY. 

(Law of March 2, 1880.) 

Art. 2. The following are not patentable: 

1. Pharmaceutical compounds and medicines of all kinds. 

2. Financial and banking schemes and combinations. 



Section 20. 

URUGUAY. 

(Law of November 11, 1885.) 

Art. 5. Patents of privileges shall not be granted for financial 
schemes; for discoveries or inventions which are well known in the 
country or out of it in printed works, pamphlets, or periodicals; for 
inventions which are purely theoretical and the useful application of 
which is not practicall}^ demonstrated; for pharmaceutical preparations, 
or for inventions which are contrary to morality or to the laws of the 
Republic. 

Section 21. 
venezuela. 

(Law of May 25, 1882.) 

Art. 17. Inventions, improvements, or new industries prejudicial 
to health or public order, to morals, or prior rights shall not be 
patented. 

Pharmaceutical compositions or remedies of any sort or kind can not 
be patented, but remain subject to the special laws and regulations on 
the subject. 

Note. — The above extracts, with the exception of that from the 
patent law of Japan (which is taken from a translation), are taken from 
the patent laws of the several countries named, as published in Patent 
La^^ s of the World, edition 1899 (Chartered Institute of Patent Agents, 
London). 



Chapter XVI. 

LAWS OF CERTAIN FOREIGN COUNTRIES PROVIDING FOR THE 
GRANT TO THE TRUE INVENTOR OF A PATENT FOR AN 
INVENTION FOR WHICH A PATENT HAS ALREADY BEEN 
GRANTED TO ANOTHER. 



Section I. 

AUSTRIA. 

(Law of January 11, 1897.) 

Sec. 29. The patent shall be forfeited by a patentee if it be known: 

1. That the patentee is not the author of the invention, or his legal 
successor, or is not to be regarded as such (sec. 5) ; or 

2. That the essential contents of the application have been taken 
from the description, drawings, models, tools, or apparatus of another, 
or from a process used by him without his consent. 

If one of these assumptions (1 and 2) only partially obtains, the pat- 
ent shall only be partially forfeited by the patentee. 

The claim for the forfeiture of a patent shall, in the first case, be 
made only by the author, his legal successors, and those who in the 
sense of section 5 are to be regarded as the author; in the second case, 
onl}^ by the injured party, and is limited against the patentee in good 
faith to within three years from the date of his entry in the register 
of patents. 

The reciprocal claims for compensation and reclamation arising out 
of the forfeiture shall be decided according to the civil code and be 
enforced by a civil suit. 

If the author or the injured party be successful, it shall be open to 
him, within thirty dsijs after delivery of the legally valid decison of 
forfeiture, to demand the transfer of the patent to himself. 

The omission of such a demand of transfer in time shall be held 
equivalent to renunciation of the patent. 

License rights legally given by the former patentee in good faith 
acquired by third persons and entered in the register of patents one 
year previously shall, in so far as the}^ are not afiected by any legally 
grounded litigation caveat (sec. 25), and without prejudice to the com- 
pensation claim arising therefrom against the original patentee, remain 
valid in the case of such a patent transfer also against the new owner 
of the patent. 

313 



314 EE VISION OF STATUTES RELATING TO PATENTS, ETC, 

Section 2. 

CEYLON. 

(Law of 1892.) 

Sec. 35. If in an action instituted in the district court at any time 
within fourteen years from the date of the filing of a specification of an 
invention under this ordinance the actual inventor proves to the satis- 
faction of the court that the petitioner or petitioners was or were not 
the actual inventor or inventors, and that at the time of the petition 
for leave to file the specification the petitioner or petitioners knew or 
had reason to believe that the knowledge of the invention was obtained 
by himself or themselves, or by some other person, surreptitiously or 
in fraud of the actual inventor, or by means of a communication 
made in confidence by the actual inventor to him or them, or to any 
person through whom he or they derived the knowledge, the court 
may make a decree declaring an exclusive privilege in respect of the 
invention to be vested, subject to the other provisions of this ordi- 
nance, in the actual inventor for a term of fourteen years from the 
date on which the petition was delivered to or received by the colonial 
secretary, and requiring the petitioner or petitioners to account for 
and pay over to the actual inventor the profits derived by him or them 
from the invention, or so much of those profits as the court, having 
regard to the degree of diligence exerted by the actual inventor in 
proceeding under this section and to all the other circumstances of the 
case, may see fit to require the petitioner or petitioners to pay. 



Section 3. 

FINLAND. 



Sec. XXIV. If any one has unlawfully appropriated an invention of 
another person which is neither published nor openly exercised, and 
has obtained a patent therefor or procured a patent for an invention to 
which he had not the sole right, only the injured party shall on that 
ground plead that the patent shall be declared invalid. If in these 
cases the injured party prefers to demand that the whole patent or the 
part of it to which he has the right shall be resigned to him he is 
entitled to do so, such claim, however, shall not be detrimental to a 
third person who has in good faith made an agreement with the holder 
of the patent. 

Section 4. 

GREAT BRITAIN. 

(Patents, Designs, and Trademarks act, 1883.) 

Sec. 26. * * * 

(4) A petition for revocation may be presented by: 

* * ***** 

(d) Any person alleging that he or any person through whom he 
claims was the true inventor of an}^ invention included in the claim of 
the patentee: 



PATENT TO TEUE INVENTOR. 315 

(8) Where a patent has been revoked on the ground of fraud, the 
comptroller ma}^, on the application of the true inventor, made in 
accordance with the provisions of this act, grant to him a patent in 
lieu of and bearing the same date as the date of revocation of the 
patent so revoked, but the patent so granted shall cease on the expira- 
tion of the term for which the revoked patent was granted. 

The same provision is found in the law of November 16, 1896, of 
New South Wales (sec. 5); the law of September 2, 1889, of New Zea- 
land (sec. 35); the law of October 13, 1884, of Queensland (sec. 29); 
the law of September 29, 1893, of Tasmania (sec. 38); the law of 
November 19, 1891, of Trinidad and Tobago (sees. 11 and 12); the law 
of July 10, 1890, of Victoria (sec. 47), and the law of November 26, 
1888, of Western Australia (sec. 31). 



Section 6. 

INDIA. 

(Inventions and designs act, 1888.) 

Sec. 38. If, in a suit instituted in the district court at any time 
within fourteen years from the date of the filing of a specification of 
an invention under this part, the actual inventor proves to the satis- 
faction of the court that the applicant was not the actual inventor, and 
that at the time of the application for leave to file the specification the 
applicant knew or had reason to believe that the knowledge of the 
invention was obtained by himself or by some other person surrepti- 
tiously or in fraud of the actual inventor, or by means of a communi- 
cation made in confidence by the actual inventor to him or to any 
person through whom he derived the knowledge, the court may make 
a decree declaring an exclusive privilege in respect of the invention 
to be vested, subject to the other provisions of this part, in the actual 
inventor for a term of fourteen years from the date on which the 
specification was filed, and requiring the applicant to account for and 
pay over to the actual inventor the profits derived by him from the 
invention, or so much of those profits as the court, having regard to 
the degree of diligence exerted by the actual inventor in proceeding 
under this section, and to all the other circumstances of the case, may 
see fit to require the applicant to pay. 

The same provision is found in the law of 1894 of Mysore, sec. 38. 



Section 6. 

JAPAN. 

(Law of March 1, 1899.) 

Art. XXIV. In case the decision that there is conflict as to an 
invention is finally established, the president of the patent bureau shall 



316 REVISIOK OF STATUTES EELATIKG TO PATENTS, ETC. 

order the interested parties to present a statement regarding the origin 
and circumstances of the invention and shall direct an examiner to 
investigate the priority of the completion of the invention. The 
decision thereon shall be furnished to the interested parties. 

Art. XXV. In case a patent alread}^ granted shall be annulled 
under the provisions of the preceding article and a patent shall be 
granted for the invention on an application, the term of such patent 
shall be reckoned from the date of registration of the first patent. 



Section 7. 
oeange free state. 

(Law of 1888.) 

Art. 32. Where letters patent have been revoked on the ground of 
fraud, the Government may, on the application of the true inventor made 
in accordance with this law, grant to him new letters patent (in lieu of 
those revoked), which shall bear the date of the revocation of the first 
letters patent. These new letters patent shall, however, cease to be 
in force on the expiration of the term for which the first revoked let- 
ters patent were granted. 



Section 8. 

SOUTH AFRICAN REPUBLIC. 

(Law of 1898.) 

Art. 38. Where letters patent have been revoked on the ground of 
fraud, the commissioner may, on the application of the true inventor 
made in accordance with this law, grant to him new letters patent (in 
lieu of those revoked), which shall bear the date of the revocation of 
the first letters patent. These new letters patent shall, however, cease 
to be in force on the expiration of the term for which the first revoked 
letters patent were granted. 



Section 9. 

STRAITS SETTLEMENTS. 

(Law of 1871.) 

Sec. 29. If, upon proceedings instituted by a person claiming to be 
the inventor, within two 3^ears from the date of a petition to file a 
specification, he shall prove to the satisfaction of the supreme court 
that the petitioner was not the inventor, and that at the time of the 
petition he knew or had good reason to believe that the knowledge of 
the invention was obtained b}^ himself or b}^ some other person sur- 



PATENT TO TEUE INVENTOE. 817 

reptitiousl}^ or in fraud of the inventor, or by means of a communi- 
cation made in confidence b}^ the actual inventor to him or to any 
person through whom he derived such knowledge, the court may com- 
pel the petitioner to assign to the inventor any exclusive privilege 
obtained under this ordinance, and to account for and pay over the 
profits thereof. 

Note. — The above extracts, with the exception of that from the 
patent law of Japan (which is taken from a translation), are taken 
from the patent laws of the several countries named, as published in 
Patent Laws of the World, Edition 1899 (Chartered Institute of 
Patent Agents, London). 



Chapter XVII. 

LAWS OF CERTAIN FOREIGN COUNTRIES RESPECTING COMPUL- 
SORY LICENSES. 



Section 1. 

AUSTRIA. 

(Law of January 11,1897.) 

Sec. 21. The owner of a patent for an invention which, without 
using an invention previously patented, can not be turned to account, 
shall be entitled to demand from the owner of the latter the grant of 
a license to use the same, if from the date of the publication of the 
grant of the earlier patent in the patent journal three years have 
elapsed, and the later invention is of considerable commercial impor- 
tance. 

A license granted shall entitle the owner of the earlier patent also 
on his side to demand a license from the subsequent patentee, which 
shall empower him to use the later invention, under the condition, 
however, that this latter stands in positive connection with the earlier 
invention. 

If it shall appear that the grant to another of the permission to use 
an invention be in the public interest, any one, even if the assumptions 
of paragraphs 1 and 2 do not apply, and if his personal trustworthiness 
be shown, shall be entitled, after the expiration of three jesLYS from 
the date of the publication of the grant of the patent in the patent 
journal, to demand from the patentee permission to use the invention 
for his business. 

If, in these cases, the license be refused by the patentee the patent 
office shall decide concerning the demand made, and shall determine, 
in case of the grant of the license, the compensation to be given, the 
guaranty, and also any further conditions of use, regard being had to 
the nature of the invention and the circumstances of the case. 

If the decision be concerning the grant of a license in the public 
interest, the patent office shall obtain the views of the ministries con- 
cerned upon the question of the existence of the public interest, and 
make these views the basis of its own decision. 

The foregoing provisions shall not apply to patents of the Govern- 
ment or war office. 

Sec. 27. A patent may be wholly or partially withdrawn if the 
patentee or his legal successor neglects to work, or allow to be 
318 



COMPULSOEY LICENSE LAWS. 819 

worked, the inyention in the country to a suitable extent, or to do 
everything necessary to insure such working. The withdrawal may 
in this case take place not earlier than after the expiration of three 
years from the date of the publication of grant of the patent in the 
patent journal. This time limit shall not hold good if the patentee or 
his legal successor, notwithstanding the invention is being worked 
abroad and the public interest requires working also in the country, 
continues to satisfy the native demand exclusively or to the greatest 
extent, by importation instead of b}^ production to a proper extent in 
the country. 

The withdrawal of the patent shall be preceded by a threat of the 
same, with a statement of the grounds, and fixing a suitable delay for 
the adequate working of the invention. 

The withdrawal shall operate from the last date set out in the with- 
drawal notice for the period of time fixed for the legal working in the 
countr}^ 

These provisions shall not apply to Government or war-ofiice patents. 



Section 2. 

BOLIVIA. 

(Law of May 8, 1858.) 

Art. 4. The State ma^^ buy the secret of any invention useful to 
industiy for the general benefit. 



Section 3. 

DENMARK. 

(Law of March 28, 1894.) 

Sec. 8. In case the interest of the public demands it, it may be enacted 
by a law that a patented invention shall, without the consent of the 
holder of the patent, be used by the State, or that the patent shall 
become void, so that the invention becomes available for use by the 
public, in both cases subject to fuir compensation to the holder of the 
patent. This compensation is paid by the State, and shall, in default 
of mutual agreement, be determined by the estimate of four experts, 
two of whom are appointed by the ministry of the interior and two by 
the holder of the patent, together with an umpire unanimously elected 
by the four experts; or, in default of unanimity, with an umpire 
appointed by the court at the domicile of the patentee; or, if he be a 
foreigner, with an umpire appointed by the court of justice {Hof-and- 
Statsret)^ who interposes if a majority of these experts can not agree 
as to the amount of compensation, and who settles the compensation 
within the limits proposed by the experts. 



320 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Section 4. 

ECUADOR. 

(Law of October 18, 1880. ) 

Art. 4. The State may buy, for the general benefit, the secret of 
any invention useful to industry. 



Section 5. 

FINLAND. 
(Ordinance of January 21, 1898.) 

Sec. 4. If the holder of the patent has not brought the invention 
into use within the country in the manner enacted with regard thereto, 
he shall be bound upon demand, upon reasonable conditions and against 
satisfactoiy securit}^, to grant permission to another for such use. 

The holder of the patent shall also be subjected to the same obliga- 
tion, even if he exercises the invention within the country, in the 
event of the economy department of the Senate declaring, upon the 
representation of the person who seeks permission to use the inven- 
tion, that the public advantage requires it, and also in the event of 
such permission being asked for by a person who otherwise can not 
exercise an invention of great importance subsequently patented for 
his account. In the latter case, however, the owner of the earlier 
patent ma}-, according to circumstances, be likewise entitled, if he 
wishes, to use the other's invention. 

If the holder of the patent refuses permission to use, which accord- 
ing to this paragraph he is bound to grant upon the declaration of the 
Senate or otherwise, the court ma}^, upon demand of the other person, 
if the conditions and security are found suitable, grant him the desired 
righi to use. If the circumstances change, the conditions in the above- 
mentioned case may be subjected to fresh examination. 

Sec. XVII. If the holder of the patent has not within three j^ears 
from the grant of the patent brought the invention into practice 
within the country to any considerable extent, or if the practice has 
been discontinued after that time, the holder of the patent shall be 
bound to grant permission to other persons to use the invention, as 
enacted in section 4 of the ordinance of this date with regard to patent 
rights and legal proceedings in matters relating to patents. 



Section 6. 

GERMANY. 

(Law of April 7, 1891.) 

Sec. 11. The patent can be revoked at the end of three years from 
the date of the official publication of the grant. " ^' '^ 

(2) If it appears to be in the interests of the community that 
licenses to others for the use of the invention should be granted, but 
the owner of the patent declines to grant such licenses for reasonable 
compensation and adequate security. 



COMPULSORY LICETTSE LAWS. 321 

Section 7. 
obeat bbitain. 

(Patents, Designs, and Trademark- act, 1883. ) 

Art. 22. If on the petition of any person interested it is proved to 
the Board of Trade that by reason of the default of a patentee to grant 
licenses on reasonable terms — 

(a) The patent is not being worked in the United Kingdom; or 

(b) The reasonable requirements of the public with respect to the 
invention can not be supplied; or 

(c) Any person is prevented from working or using to the best 
advantage an invention of which he is possessed, the board may order 
the patentee to grant licenses on such terms as to the amount of roy- 
alties, security for payment, or otherwise, as the board, having regard 
to the nature of the invention and the circumstances of the case, may 
deem just, and any such order may be enforced by mandamus. 

Substantially the same provision is found in the law of March 3, 
1890, of the Bahama Islands (Sec. YII); the law of British New 
Guinea; the law of 1892 of Ceylon (sec. 39); the law of 1888 of India 
(sec. 43); the law of November 26, 1894, of Mysore (sec. 42); the law 
of 1896 of Negri Sembilan (sec. 16); the law of 1889 of New Zealand 
(sec. 33); the law of 1888 of Orange Free State (sec. 21); the law of 
1896 of Perak (sec. 16); the law of 1884 of Queensland (sec. 25); the 
law of 1896 of Selangor (sec. 16); the law of 1898 of South African 
Republic (sec. 27) ; the law of 1893 of Tasmania (sec. 36) ; the law of 
1894 of Trinidad and Tobago (sec. 14), and the law of November 26, 
1888, of Western Australia (sec. 27). 



Section 8. 

HUNGABY. 

(Law of July 7, 1895.) 

Sec. 20. A patent can be withdrawn or revoked as a whole or in 
part — 

If the owner of the patent has neglected to work or use his inven- 
tion within the countries of the Hungarian Crown, in substance and to 
an adequate extent, or if he has unjustifiably interrupted such work- 
ing or use, or if he has not at least done all that is necessary, accord- 
ing to his own and the country's circumstances and conditions, for 
securing and continuing such working. 

This withdrawal or revocation can not, as a rule, take place until 
three years after the publication of the grant of the patent. 

Exceptionally such withdrawal or revocation can take place at an 
earlier time if the owners of the patent do not meet the demands of 
the country by working the invention in the country, or do not per- 
mit it to be done by granting licenses, and do not fulfill this obligation 
within a term appointed by the patent office under due consideration 
of the circumstances, notwithstanding that the invention is worked 



322 EEVISION OF STATUTES EELATINa TO PATENTS, ETC. 

abroad and its working in the country is desirable with regard to the 
public interest. 

2. After three years from publishing the grant of the patent, if the 
owner of the patent does not work his patent to an extent adequate to 
the demand of the country and refuse to grant other trustworthy 
manufacturers in the country the necessary licenses for a suitable com- 
pensation and on good security, such compensation being determined 
by the patent office. 

Before such withdrawal or revocation the owner of the patent shall 
be notified, a suitable term being allowed. 

The withdrawal or revocation in both cases comes into force on the 
decision as to such withdrawal or revocation. 

A patent granted to the State can not be withdrawn or revoked. 



Section 9. 

JAPAN. 
(Law of March 1, 1899.) 

Art. XVI. President of patent bureau shall have the power, when- 
ever he thinks it necessary or he is so required by proper authori- 
ties, of limiting or refusing a patent for such inventions as are 
required by the public interests to be widespread, or are necessitated 
for military purposes, or are required to be kept in secret, or of 
limiting or annulling a patent already granted therefor. 

In the above-mentioned cases the Government shall give to such 
patent applicant or patent owner a reasonable compensation. 

Art. XXXVIII. President of patent bureau shall have power to 
annul a patent in case a patented invention is in the following circum- 
stances: 

(a) When a patent owner without a reasonable cause has failed to 
work and publish his invention in this Empire on and within three years 
from the date of the certificate of patent, or when having ceased for 
more than three years to work and publish it he has refused an offer 
by a third party to obtain an assignment or a use thereof on and with 
a reasonable term and condition. 



Section 10. 

LUXEMBURG. 
(Law of June 30, 1880.) 

A patent may be withdrawn after three years by royal grand ducal 
decree, but with an appeal to the judicial committee of the council of 
state, if the patentee neglects to work his invention in the Grand 
Duchy to a suitable extent or at least to do all that is necessary to 
secure this working. 

Similarly, after three years iJt may be declared by a royal grand 



COMPULSORY LICENSE LAWS. 323 

ducal decree, on the advice of the council of state, that the interests of 
the public require that the right of working a patented invention shall 
be granted to one or more persons who have made application. In 
this case the compensation and the guaranties due to the patentee from 
the new claimants for the working shall, in case of nonagreement, be 
fixed by judicial decision. 

Section 11. 

MALTA. 

(Law of 1899.) 

Art, 50. The holder of a patent may be compelled to assign his right 
or to grant the use thereof for a consideration, to be determined by the 
competent civil court, if the industrial invention or modification to 
which the patent refers shall not have been put into use within twelve 
months subsequent to the concession or if its working shall have been 
suspended for twelve months continuously. 



Section 12. 

NORWAY. 
(Law of June 16, 1885.) 

Sec. 9. If the King so decide, a patented invention may be used for the 
Government service without the consent of the proprietor of the patent. 
A patented invention which is of essential value to any particular trade 
or industry may, by a similar decision, be appropriated to private 
use. The proprietor shall be entitled in both cases to compensation, 
the amount of which shall, in default of an amicable arrangement, be 
determined by arbitration. In the first case the payments shall be 
made b}^ the (government, and in the second case by the person or per- 
sons using the invention. If the compensation be fixed at a lump sum 
once for all it shall be paid before the invention is taken into use. If 
it be fixed at a royalty the arbitrators shall, if so required by the pro- 
prietor of the patent, also fix the times at which the payments shall be 
made and also decide the amount of security to be given to insure due 
compliance. The payment awarded by the arbitrators can be enforced 
by distraint. 

Section 13. 

SWEDEN. 

(Law of May 16, 1884.) 

Sec. 17. If the King considers it necessary that a patented invention 
shall be open to the free use of the public or appropriated on account 
of the State, the patent shall be no obstacle; the patentee shall, how 
ever, be entitled to full compensation. If the amount of compensation 
can not be agreed upon, it shall be fixed by a special jury appointed by 
the court, according to the provisions for expropriation of land or 
homesteads required for public purposes. 



324 eevision of statutes eelating to patents, eto. 

Section 14. 

SWITZEBLANl). 

(Law of June 29, 1888.) 

Art. 9. The patent shall be forfeited. 
* * * * * * • 

(4) If the patented article is imported from abroad and at the same 
time the proprietor of the patent has refused applications offered on 
equitable terms for Swiss licenses. 

Art. 12. The proprietor of a patent who finds it impossible to work 
his invention without using an invention previously patented, may 
exact of the proprietor of the latter the grant of a license, if three 
years have elapsed since the lodging of the application for the first 
patent, and if the new invention has a real industrial importance. 

If the license is granted, the proprietor of the first patent shall 
reciprocally have the right of requiring also a license authorizing him 
to work the new invention, provided that it has, in its turn, a real 
connection with the first. 

All litigation which may arise out of the application of the above 
provisions shall be settled by the Federal tribunal, which shall deter- 
mine at the same time the amount of the indemnity and the nature of 
the guaranties to be furnished. 

Note. — ^The above extracts, with the exception of that from the 
patent law of Japan (which is taken from a translation), are taken 
from the patent laws of the several countries named, as published in 
Patent Laws of the World, edition 1899 (Chartered Institute of Patent 
Agents, London). 



Chapter XVIII. 

TREATY AGREEMENTS RELATING TO TRADEMARKS BETWEEN 
THE UNITED STATES AND FOREIGN NATIONS. ^ 



Section 1. 

ATISTEIA-HTJNGARY. 

Convention rdatwe to 1/rade-ma/rlcs, 

[CJoncluded November 26, 1871; ratifications exchanged at Vienna April ^, 1872; proclaimed June 1, 

ARTICLE I. 

Every reproduction of trade-marks which in the countries or terri- 
tories of the one of the contracting- parties are affixed to certain mer- 
chandise to prove its origin and quality is forbidden in the countries 
or territories of the other of the contracting parties, and shall give to 
the injured party ground for such action or proceedings to prevent 
such reproduction, and to recover damages for the same, as may be 
authorized by the laws of the country in which the counterfeit is proven, 
just as if the plaintiff were a citizen of that country. 

The exclusive right to use a trade-mark for the benefit of citizens of 
the United States in the Austro-Hungarian Empire, or of citizens of 
the Austro-Hungarian Monarchy in the territory of the United States, 
can not exist for a longer period than that fixed by the law of the coun- 
try for its own citizens. If the trade-mark has become public property 
in the country of its origin, it shall be equally free to all in the coun- 
tries or territories of the other of the two contracting parties. 

ARTICLE n. 

If the owners of trade-marks, residing in the countries or territories 
of the one of the contracting parties, wish to secure their rights in the 
countries or territories of the other of the contracting parties, they 
must deposit duplicate copies of those marks in the Patent Office at 
Washington and in the chambers of commerce and trade in Vienna and 
Pesth. 

Article III. 

The present arrangement shall take effect ninety days after the 
exchange of ratifications, and shall continue in force for ten years from 
this date. 

In case neither of the high contracting parties gives notice of its 
intention to discontinue this convention twelve months before its expira- 
tion, it shall remain in force one year from the time that either of the 
high contracting parties announces its discontinuance. 

^The Convention for the Protection of Industrial Property, concluded at Paris 
March 20, 1883, will be found ante Chap. II, sec. 1, p. 146. 

325 



326 eevision of statutes relating to patents, etc. 

Article IV. 

The ratifications of this present convention shall be exchanged at 
Vienna within twelve months, or sooner if possible. 

In faith whereof the respective plenipotentiaries have signed the 
present convention, as well in English as in German and Hungarian, 
and have affixed thereto their respective seals. 

Done at Vienna the 25th day of November, in the year of our Lord 
1871, in the ninety-sixth year of the Independence of the United States 
of America, and in the twenty-third year of the reign of His Imperial 
and Royal Apostolic Majesty. 

SEAL.l John Jay. 



:i 



SEAL.] AnDRASSY. 

On the 10th of June, 1891, the Austro-Hungarian Department of 
Commerce issued a decree. No. 23208, to the following effect : 

Marks of subjects of Sweden and Norway, as well as (citizens) of the United States 
of North America, are, by reason of the special conditions of the trade-mark con- 
ventions of May 10, 1890, and of November 25, 1871, admitted to registration, even 
when they only consist of names, firms, and other words, if proof is produced that 
the same are registered in the home country. 



Section 2. 

BELGIUM. 



Article respecting trade-marhs additional to the treainj of commerce and 
na/vigation of July 17^ 1858. 

[Concluded at Brussels December 20, 1868; proclaimed July 30, 1869.] 
ADDITIONAL ARTICLE. 

The high contracting parties, desiring to secure complete and effi- 
cient protection to the manufacturing industry of their respective 
citizens, agree that any counterfeiting in one of the two countries of 
the trade-marks affixed in the other on merchandise, to show its origin 
and quality, shall be strictly prohibited, and shall give ground for an 
action of damages in favor of the injured party, to be prosecuted in 
the courts of the country in which the counterfeit shall be proven. 

The trade-marks in which the citizens of one of the two countries 
may wish to secure the right of property in the other must be lodged, 
to wit: the marks of citizens of the United States at Brussels, in the 
office of the clerk of the tribunal of commerce; and the marks of Bel- 
gian citizens at the Patent Office in Washington. 

It is understood that if a trade-mark has become public property in the 
country of its origin it shall be equally free to all in the other country. 

This additional article shall have the same duration as the before- 
mentioned treaty of the 17th July, 1858, to which it is an addition. 
The ratifications thereof shall be exchanged in the delay of six months, 
or sooner if possible. 

In faith whereof the respective plenipotentiaries have signed the 
same and affixed thereto their seals. 

Done at Brussels in duplicate the twentieth of December, eighteen 
hundred and sixty-eight. 

[seal.] H. S. Sanford. 

[seal.] Jules Vander Stichelen. 



TRADEMARK TREATIES OF UNITED STATES. 327 

Treaty of commerce^ na/vigation^ cmd trade-Tnarks. 

(Concluded March 8, 1875; ratifications exchanged at Brussels, June 11, 1875; proclaimed June 29, 1875.] 

ARTICLE XV. 

The high contracting parties, desiring to secure complete and effi- 
cient protection to the manufacturing industry of their respective 
citizens, agree that any counterfeiting in one of the two countries of 
the trade-marks affixed in the other on merchandise, to show its origin 
and quality, shall be strictly prohibited, and shall give ground for an 
action of damages in favor of the injured party, to be prosecuted in 
the courts of the country in which the counterfeit shall be proven. 

The trade-marks in which the citizens of one of the two countries 
may wish to secure the right of property in the other must be lodged, 
to wit: the marks of citizens of the United States, at Brussels, in the 
office of the clerk of the tribunal of commerce; and the marks of Bel- 
gian citizens, at the Patent Office in Washington. 

It is understood that if a trade-mark has become public property in 
the country of its origin it shall be equally free to all in the other 
country. 

ARTIC5LE XVI. 

The present treaty shall be in force during ten years from the date 
of the exchange of the ratifications, and until the expiration of twelve 
months after either of the high contracting parties shall have announced 
to the other its intention to terminate the operation thereof, each 
party reserving to itself the right of making such declaration to the 
other at the end of the ten years above mentioned; and it is agreed that 
after the expiration of the twelve months of prolongation accorded on 
both sides this treaty and all its stipulations shall cease to be in force. 

ARTICLE xvn. 

This treaty shall be ratified, and the ratifications shall be exchanged 
at Brussels within the term of nine months after its date, or sooner if 
possible. 

In faith whereof the respective plenipotentiaries have signed the 
present treaty in duplicate, and have affixed thereto their seals at 
Washington, the 8th day of March, 1875. 

[seal.] Hamilton Fish. 

[seal.] Maurice Delfosse. 



Convention concerning trade-marks. 

[Concluded April?, 1884; ratifications exchanged at Washington July 7, 1884; proclaimed July 9, 1884.] 

ARTICLE I. 

Citizens of the United States in Belgium and Belgian citizens in the 
United States of America shall enjoy, as regards trade-marks and 
trade labels, the same protection as native citizens, without prejudice 
to any privilege or advantage that is or may hereafter be granted to 
the citizens of the most favored nation. 

S. Doc. 20 22* 



328 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

ARTICLE n. 

In order to secure to their marks the protection provided for by the 
foregoing article, the citizens of each one of the contracting parties 
shall be required to fulfill the law and regulations of the other. 

ARTICLE in. 

The present arrangement shall take effect on the day of its official 
publication, and shall remain in force until the expiration of the twelve 
months following the notice, given by either of the contracting parties, 
of its desire for the cessation of its effects. 

The ratifications of this convention shall be exchanged at Washing- 
ton as soon as possible within one year from this date. 

In testimony whereof the respective plenipotentiaries have signed 
this convention in duplicate, in the English and French languages, and 
affixed thereto the seals of their arms. 

Done at Washington the 7th day of April, in the year of our Lord 
1884. 

[seal.] Fredk. T. Frelinghuysen. 

[seal.] Thre. de Bounder de Melsbroeck. 



Section 3. 

BRAZIL. 

Agreement concefrning trade-marJcs, 

[Concluded September 24, 1878; proclaimed June 17, 1889.] 

The Government of the United States of America and the Govern- 
ment of His Majesty the Emperor of Brazil, with a view to the recip- 
rocal protection of the marks of manufacture and trade in the two 
countries, have agreed as follows: 

The citizens or subjects of the two high contracting parties shall 
have in the dominions and possessions of the other the same rights as 
belong to native citizens or subjects in everything relating to property 
in marks of manufacture and trade. 

It is understood that any person who desires to obtain the aforesaid 
protection must fulfill the formalities required by the laws of the 
respective countries. 

In witness whereof the undersigned, duly authorized to this end, 
have signed the present agreement and have affixed thereto the seals 
of their arms. 

Done in duplicate at Rio de Janeiro, the 24:th day of the month of 
September, 18T8. 

[seal.] Henry Washington Hilliard. 

[seal.] B. de Villa Bella. 



teademark treaties of united states. 329 

Section 4. 

DENMABK 

Convention for the reciprocal protection of trade-marJcs amd trade labels. 

[CJoncluded at Copenhagen, June 15, 1892; proclaimed October 12, 1892.] 

With a view to secure for the manufacturers in the United States 
of America and those in Denmark the reciprocal protection of their 
trade-marks and trade labels, the undersigned, duly authorized to that 
effect, have agreed on the following dispositions: 

ABTICLE I. 

The subjects or citizens of each of the high contracting parties shall 
in the dominions and possessions of the other have the same rights as 
belong to native subjects or citizens in everything relating to trade- 
marks and trade labels of every kind. 

Provided always, that in the United States the subjects of Denmark, 
and in Denmark the citizens of the United States of America, can not 
enjoy these rights to a greater extent or for a longer period of time 
than in their native country. 

ARTICLE n. 

Any person in either country desiring protection of his trade-mark 
in the dominions of the other must fulfill the formalities required by 
the law of the latter; but no person, being a subject or citizen of one 
of the contracting States, shall be entitled to claim protection in the 
other by virtue of the provisions of this convention, unless he shall 
have first secured protection in his own country in accordance with 
the laws thereof. 

ARTICLE m. 

This arrangement shall go into effect immediately on or after the 
exchange of the ratifications, and shall be in force until a year after it 
has been recalled by the one or the other of the two high parties. 

ARTICLE rv. 

The present convention shall be ratified by the President of the 
United States of America, by and with the advice and consent of the 
Senate thereof, and by His Majesty the King of Denmark, and the rati- 
fications shall be exchanged at Copenhagen as soon as may be within 
ten months from the date hereof. 

In witness whereof the undersigned have signed the present conven- 
tion and have affixed thereto the seal of their arms. 

Done at Copenhagen in double expedition the 15th June, 1892. 

[seal.] Clark E. Carr. 

rSEAL,] EeEDTZ ThOIT. 



330 REVISION OF STATUTES RELATING TO PATENTS, ETO. 

Section 5. 

FRANCE. 

Con/oention concerning trade-marks, 

[Concluded April 16, 1869; ratifications exchanged at Washington, July 3, 1869; proclaimed July 6, 1869.] 

ARTICLE I. 

Every reproduction in one of the two countries of trade-marks affixed 
in the other to certain merchandise to prove its origin and quality is 
forbidden, and shall give ground for an actio» for damages in favor of 
the injured party, to be prosecuted in the courts of the country in 
which the counterfeit shall be proven, just as if the plaintiff were a 
subject or citizen of that country. 

The exclusive right to use a trade-mark for the benefit of citizens 
of the United States in France, or of French subjects in the territory of 
the United States, can not exist for a longer period than that fixed by 
the law of the country for its own citizens. 

If the trade-mark tas become public property in the country, of its 
origin, it shall be equally free to all in the other country. 

ARTICLE II. 

If the owners of trade-marks, residing in either of the two countries, 
wish to secure their rights in the other country, they must deposit 
duplicate copies of those marks in the Patent Office at Washington, 
and in the clerk's office of the tribunal of commerce of the Seine, at 
Paris. 

ARTICLE in. 

The present arrangement shall take effect ninety days after the 
exchange of ratifications by the two Governments, and shall continue 
in force for ten years from this date. 

In case neither of the two high contracting parties gives notice of 
its intention to discontinue this convention, twelve months before its 
expiration, it shall remain in force one year from the time that either 
of the high contracting parties announces its discontinuance. 

ARTICLE IV. 

The ratifications of this present arrangement shall be exchanged at 
Washington within ten months, or sooner if possible. 

In faith whereof the respective plenipotentiaries have signed the 
present convention in duplicate and affixed thereto the seal of their 
arms. 

Done at Washington the 16th day of April, in the year of our Lord 
1869. 

[SEAL.1 Hamilton Fish. 

[seal.] Berthemy. 



trademark treaties of united states. 331 

Section 6. 

GEEMANY. 

Convention respecting consuls and trade-marks. 

[Concluded December 11, 1871; ratifications exchanged at Berlin April 29, 1872; proclaimed June 1, 

1872.] 

ARTICLE XVn. 

With regard to the marks or labels of goods, or of their packages, 
and also with regard to patterns and marks of manufacture and trade, 
the citizens of Germany shall enjoy in the United States of America, 
and American citizens shall enjoy in Germany, the same protection as 
native citizens. 

ARTICLE XVIII. 

The present convention shall remain in force for the space of ten 
years, counting from the day of the exchange of the ratifications, 
which shall be exchanged at Berlin within the period of six months. 

In case neither party gives notice, twelve months before the expira- 
tion of the said period of ten years, of its intention not to renew this 
convention, it shall remain in force one year longer, and so on, from 
year to year, until the expiration of a year from the day on which one 
of the parties shall have given such notice. 

In faith whereof the plenipotentiaries have signed and sealed this 
convention. 

Berlin, the 11th of December, 1871. 

[seal.] Geo. Bancroft. 

[seal.] B. Koenig. 

Section 7. 

great BRITAIN. 

Declaration respecting trade-marJc8. 

[Concluded October 24, 1877 ; ratification advised by Senate May 22, 1878 ; ratified by President May 
25, 1878 ; proclaimed July 17, 1878.] 

The Government of the United States of America and the Govern- 
ment of her Majesty the Queen of the United Kingdom of Great Britain 
and Ireland, with a view to the reciprocal protection of the marks of 
manufacture and trade in the two countries, have agreed as follows: 

The subjects or citizens of each of the contracting parties shall have, 
in the dominions and possessions of the other, the same rights as belong 
to native subjects or citizens, or as are now granted or may hereafter 
be granted to the subjects and citizens of the most favored nation, in 
everything relating to property in trade-marks and trade labels. 

It is understood that any person who desires to obtain the aforesaid 
protection must fulfill the formalities required by the laws of the 
respective countries. 

In witness whereof the undersigned have signed the present decla- 
ration, and have affixed thereto the seal of their arms. 

Done at London, the 24th day of October, 1877. 

[seal.] Edwards Pierrepont. 

[seal.] Derby. 



332 BEVISION OF STATUTES RELATING TO PATENTS, ETO. 

Section 8. 

ITALY. 

Deda/ration for the reciprocal protection of marks of manufacture and, 

trade, 

[Concluded Jane 1, 1882; latification advised by the Senate February 25, 1884; proclaimed March 19, 

1884.] 

DECLARATION. 

The Government of the United States of America and the Govern- 
ment of His Majesty the King of Italy, wishing to provide for the 
reciprocal protection of the marks of manufacture and trade, have 
agreed as follows: 

The citizens of each of the high contracting parties shall enjoy, in 
the dominions and possessions of the other, the same rights as belong 
to native citizens, or as are now granted or may hereafter be granted 
to the subjects or citizens of the most favored nation, in everything 
relating to property in trade-marks and trade labels. 

It is understood that any person who desires to obtain the aforesaid 
protection must fulfill the formalities required by the laws of the re- 
spective countries. 

In witness whereof the undersigned, having been duly authorized to 
this effect, have signed the present declaration, and have affixed thereto 
the seal of their arms. 

Done in duplicate original at Washington, this 1st day of June, 1882. 

[seal.] Fred'k T. Frelinghuysen. 

[seal.] Fava. 

[Note. — Inasmuch as the act of Congress entitled "An act relating to the registra- 
tion of trade-marks," approved March 3, 1881, gives the right of trade-mark registry 
to subjects of any foreign country which by law admits the Uke right for citizens of 
the United States, this declaration is held to be an establishment of the fact that such 
reciprocal privilege exists, and is therefore effective from June 1, 1882, the date of its 
signature.] 



Section 9. 

JAPAN. 



Treaty "between the United States of America and the Empire ofJapa/nr^ 
Commerce and NoAiigation. 

[Concluded at Washington November 22, 1894; ratification advised by the Senate February 5, 1895; 
ratified by the President February 15, 1895; ratified by the Emperor February 27, 1895; ratifications 
exchanged at Washington, March 21, 1895; proclaimed March 21, 1895.] 

By the President of the United States of America. 

A Proclamation. 

Whereas a treaty of commerce and navigation between the United 
States of America and the Empire of Japan was concluded and signed 
by their respective plenipotentiaries at the city of Washington on the 
22d day of November, 1894, which treaty, being amended by the Sen- 



TRADEMAEK TREATIES OF UJSTITED STATES. 333 

ate of the United States, and being in the English language, is word 
for word as follows: 

The President of the United States of America and His Majesty the 
Emperor of Japan, being equally desirous of maintaining the rela- 
tions of good understanding which happily exist between them, by 
extending and increasing the intercourse between their respective 
States, and being convinced that this object cannot better be accom- 
plished than by revising the treaties hitherto existing between the two 
countries, have resolved to complete such a revision, based upon 
principles of equity and mutual benefit. 



ARTICLE XVI. 

The citizens or subjects of each of the High Contracting Parties 
shall enjoy in the territories of the other the same protection as native 
citizens or subjects in regard to patents, trade-marks, and designs, 
upon fulfillment of the formalities prescribed by law. 



PROTOCOL. 

But nothing contained in this protocol shall be held to limit or 
qualify the right of the Japanese Government to restrict or to pro- 
hibit the importation of adulterated drugs, medicines, food, or bever- 
ages; indecent or obscene prints, paintings, books, cards, lithographic 
or other engravings, photographs, or any other indecent or obscene 
articles; articles in violation of the patent, trade-mark, or copyright 
laws of Japan; or any other article which, for sanitary reasons, or in 
view of public security or morals, might offer any danger. 



Convention heimeen the United States of America amd the Empire of 
Japan. — Patents.^ trade-ma/rks^ amd designs, 

[Concluded at Washington January 13, 1897; ratification advised by the Senate February 1, 1897; 
ratified by the President February 2, 1897; ratified by the Emperor March 6, 1897; ratifications 
exchanged at Tokyo March 8, 1897; proclaimed March 9, 1897.] 

The President of the United States of America and His Majesty 
the Emperor of Japan, being desirous of securing immediate recipro- 
cal protection for patents, trade-marks, and designs have resolved to 
conclude a convention for that purpose, and have appointed as their 
plenipotentiaries: 

Article XVI of the Treaty of Commerce and Navigation between 
the United States of America and Japan concluded at W ashington on 
the twenty-fourth day, the eleventh month, the twenty-seventh year 
of Meiji, corresponding to the twenty-second day of November, eight- 
een hundred and ninety-four of the Christian Era, shall have full force 
and effect from the date of the exchange of ratifications of this con- 
vention. 



334 REVISION OP STATUTES RELATING TO PATENTS, ETC. 

Section 10. 

KETHEBLANDS. 

The object of a convention is accomplished by the exchange of diplo- 
matic notes, as follows: 

{!) Mr, de WecJcherlin to Mr, FrelvngKuysen 

Legation of the Netherlands, 

. Washmgton^ February 10^ 1883. 
Mr. Secretary of State: 

I have the honor herewith to transmit to your excellency a copy of 
the official edition of the Dutch law relative to trade-marks, bearing 
date of May 25, 1880. 

The provisions of this law make no distinction between natives of 
the Netherlands and foreigners, so that citizens of the United States 
of America receive the same usage in the Netherlands as my country- 
men as regards everything connected with the registration and protec- 
tion of their trade-marks. 

It consequently seems that, so far as the Netherlands are concerned, 
the conditions of reciprocity are fulfilled which are established for the 
registration and protection of foreign trade-marks in the United States 
of America by the act of Congress approved March 3, 1881, which 
allows the registration of trade-marks whose owners reside in foreign 
countries the laws of which grant the same privilege to the citizens of 
the United States of America. 

I have, therefore, been instructed by my Government to beg your 
excellency to be pleased, if there are no objections, to cause the adop- 
tion of the measures necessary in order that subjects of the Nether- 
lands may hereafter avail themselves in the United States of America 
of the act of Congress to which 1 have just referred. 

Be pleased to accept, Mr. Secretary of State, etc. , 

G. DE Weckherlin. 



(^) Mr, Frelmghwysen to Mr, de Weckherlin, 

Department of State, 
Washington,^ February 16^ 1883. 

Sm: I have the honor to acknowledge the receipt of your note of 
the 10th instant, by which you communicate to me the text of the 
Netherlands law of the 25th of May, 1880, concerning marks of trade 
and commerce. 

I have taken due note of your statement that this law maks no dis- 
tinction between Netherlanders and foreigners, so that the citizens of 
the United States are treated in the low countries on the same footing 
as the natives thereof in all that concerns the registration and protec- 
tion of their commercial and trade marks. 

As the enacting clause of the act of Congress of March 3, 1881, "to 
authorize the registration of trade-marks and protect the same," pro- 
vides in terms as follows: "That owners of trade-marks used in com- 
merce with foreign nations or with the Indian tribes, provided such 
owners shaU be domiciled in the United States, or located in any foreign 



TRADEMARK TREATIES OF UNITED STATES. 335 

country or tribes which by treaty, convention, or law afford similar 
privileges to citizens of the United States, may obtain registration of 
such trade-marks by complying with" the requirements of that act, 
and as your declaration establishes the fact that the Netherlands law 
gives similar privileges to citizens of the United States located in the 
low countries, the fact of entire reciprocity of usage between the two 
countries in this respect may now be regarded as established and evi- 
denced by the present exchange of diplomatic notes, and as henceforth 
operative without further formalities between them. 
Accept, sir, etc., 

Frederick T. Frelinghuysen. 



Section 11. 

RUSSIA. 



Article respectmg trade-marks^ additional to the treaty of navigation 
OMd cormnerce of December 6-18^ 1832. 

[Concluded at Washington January 27, 1868 ; ratifications exchanged at St. Petersburg September 21, 
1868; proclaimed October 15, 1868.] 

ADDITIONAL ARTICLE. 

The high contracting parties, desiring to secure complete and effi- 
cient protection to the manufacturing industry of their respective 
citizens and subjects, agree that any counterfeiting in one of the two 
countries of the trade-marks affixed in the other on merchandise, to 
show its origin and quality, shall be strictly prohibited and repressed, 
and shall give ground for an action of damages in favor of the injured 
party, to be prosecuted in the courts of the country in which the coun- 
terfeit shall be proven. 

The trade-marks in which the citizens or subjects of one of the two 
countries may wish to secure the right of property in the other must 
be lodged exclusively, to wit, the marks of citizens of the United 
States in the department of manufactures and inland commerce at St. 
Petersburg, and the marks of Russian subjects at the Patent Office in 
Washington. 

This additional article shall be terminable by either party, pursuant 
to the twelfth article of the treaty to which it is an addition. It shall 
be ratified by the President, by and with the advice and consent of the 
Senate of the United States, and by His Majesty the Emperor of all 
the Russias, and the respective ratifications of the same shall be ex- 
changed at St. Petersburg within nine months from the date hereof, 
or sooner if possible. 

In faith whereof the respective plenipotentiaries have signed this 
convention, and thereto affixed the seals of their arms. 

Done at Washington the 30th day of March, in the year of our 
Lord 1867. 

[seal.] William H. Seward. 

[seal.] Edouard de Stoeckl. 



336 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Declaration respecting jyrevious treaty stipulations in rega/rd to trade- 
rrva/rlcs signed Ma/rch 28, 187 J^ 

[Proclaimed November 24, 1874.] 
ARTICLE I. 

With regard to marks ot goods or of their packages, and also with 
regard to marks of manufacture and trade, the citizens of the United 
States of America shall enjoy in Russia, and Russian subjects shall 
enjoy in the United States, the same protection as native citizens. 

ARTICLE n. 

The preceding article, which shall come immediately into operation, 
shall be considered as forming an integral part of the treaty of the /^S 
December, 1832, and shall have the same force and duration as the said 
treaty. 

In faith whereof the undersigned have drawn up and signed the 
present declaration, and affixed thereto their seals. 

Done in duplicate in the English and Russian languages at St 
Petersburg, this J|JJ day of March, 1874. 

[seal.] Marshall Jewell. 

[seal.] Gortchacow. 



Section 12. 

SERBIA. 

Convention for facilitatmg a/nd devdopvng com/mercial relations. 

[CJojicluded at Belgrade, October 14, 1881; ratifications exchanged at Belgrade November 15, 1882; 

proclaimed December 27, 1882.] 

ARTICLE Xn. 

The high contracting parties, desiring to secure complete and effi- 
cient protection to the manufacturing industry of their respective 
citizens and subjects, agree that any counterfeiting in one of the two 
countries of the trade-marks affixed in the other on merchandise to 
show its origin and quality shall be strictly prohibited and repressed 
and shall give ground for an action of damages in favor of the injured 
parties, to be prosecuted in the courts of the country in which the 
counterfeit shall be proven. 

The trade-marks in which the citizens or subjects of one of the two 
countries may wish to secure the right of property in the other, must 
be registered exclusively, to wit: The marks of citizens of the United 
States in the tribunal of commerce at Belgrade, and the marks of Ser- 
bian subjects in the Patent Office at Washington, subject to the con- 
ditions and restrictions prescribed by the laws and regulations of the 
country in which the trade-marks are registered. 



teademauk treaties of united states. 837 

Section 13. 

SPAIN. 

Convention concerning trade-marks, 

[Concluded June 19, 1882: ratificationa exchanged at Washington April 19, 1883; proclaimed April 19, 

■ 1883.] 

ARTICLE I. 

The citizens and subjects of each of the two contracting parties shall 
enjoy, in the dominions and possessions of the other, the same rights 
as the natives of the country in everything relating to the ownership 
of trade-marks, industrial designs or models, or of manufactures of 
any kind. 

ARTICLE II. 

Persons desiring to secure the aforesaid protection shall be obliged 
to comply with the formalities required by the laws of the respective 
countries. 

ARTICLE in. 

This convention shall take effect as soon as it shall have been pro- 
mulgated in both countries; and shaU remain in force for ten years 
thereafter, and further until the expiration of one year after either of 
the contracting parties shall have given notice to the other of its wish 
to terminate the same; each of the contracting parties being at liberty 
to give such notice to the other at the end of said period of ten years 
or any time thereafter. 

The ratifications of this convention shall be exchanged at Washing- 
ton as soon as possible within one year from this date. 

In testimony whereof the respective plenipotentiaries have signed 
this convention in duplicate, in the English and Spanish languages, 
and affixed thereto the seals of their arms. 

Done at Washington, the 19th day of June, in the year of our Lord 
1882. 

SEAL.] Fred'k T. Frelinghuysen. 

SEAL.] Fran'''' Barca. 



Section 14. 

SWITZERLAND. 



The object of a convention is accomplished by the exchange of dip- 
lomatic notes, as follows: 

{1) Mr. Frey to the Secreta/ry of State. 

Swiss Legation, 
Washington, April ^7, 1883. 
Mr. Secretary of State: 

The undersigned, minister of the Swiss Confederation, has this day 
had the honor to receive your note of the 24th instant * * * rela- 
tive to the mutual protection of trade-marks. 



338 REVISION OF STATUTES RELATING TO PATENTS, ETO. 

The undersigned sees by the aforesaid note that you would prefer 
to make such an arrangement between the United States and Switzer- 
land in the form of an exchange of notes, inasmuch as that form 
appears to you to be the most simple and the best calculated to avoid 
the difficulties connected with the ratification of a declaration or con- 
vention. 

The undersigned has the honor to reply that, * * * by a com- 
munication of the 6th of March last, he laid before the Federal 
Council the text of your note of the 5th of that month, and at the 
same time he proposed to try an exchange of declarations which, as 
regards the form, would coincide with your views. The Federal 
Council having consented thereto by its communication of March 30, 
and having instructed the undersigned with full powers to make such 
an arrangement, the undersigned thinks that he represents the inten- 
tions of his Government by giving his adhesion to an exchange of 
notes. 

As regards the question whether the principle of reciprocity is 
embodied in the federal law of December 19, 1879, the undersigned 
has the honor to invite your attention to the text of article 7, para- 
graph 2, of the federal law of December 19, 1879, and also to the 
contents of the message of the Federal Council relative thereto. In 
the aforesaid paragraph of the law of December 19, 1879, it is expressly 
provided that producers and merchants, whose business is carried on 
in a State which accords the right of reciprocity to Swiss citizens, may 
have their marks registered in the same manner as Swiss citizens. 
But one condition is added, viz: That foreigners shall be obliged to 
prove that these marks are already protected in the State to which 
they belong, the sole object of which reservation is to prevent foreigners 
from depositing with fraudulent intent, under the protection of reci- 
procity, marks for which they can not claim protection in their own 
country. The Federal Council, moreover, in its message of October 
13, 1879, whereby it transmitted to the Federal Chambers a bill for 
the protection of trade-marks, made the following declaration touch- 
ing trade-marks: "As regards foreign trade-marks we are of opinion 
that Switzerland should stand upon the ground of reciprocity, and that 
this is the only position that should be taken by us in the interest of 
our industry." 

In view of this declaration the Federal Chambers, in accepting with- 
out material modification the aforesaid paragraph 2 of article 7 of the 
law in question, were without doubt actuated by a desire to embody 
the principle of full reciprocity in the law. 

The undersigned takes the liberty in conclusion, to ask your atten- 
tion to the fact that the Confederation has, since the promulgation of 
the aforesaid law, concluded a convention with various States for the 
protection of trade -marks upon the basis of reciprocity — for instance, 
with Great Britain, Belgium, and the Netherlands — and that the Con- 
federation, previously to the promulgation of that law, guaranteed, in 
its commercial treaties with France, Germany, and Italy, protection in 
Switzerland for their trade-marks to the citizens or subjects of those 
States. 

The undersigned thinks that he has by the foregoing furnished proof 
that the Confederation recognizes the principles of reciprocity as 
regards the international protection of trade-marks as an integral part 



TKADEMAEK TREATIES OF UNITED STATES. 339 

of its public law, and that the United States may, with the most perfect 
confidence, enter into such an arrangement with the Confederation. 
The undersigned avails himself, etc. 

E. Fret. 



(^) Mr. Damis to Mr, Frey, 

Department of State, 

Washington, May l\, 1883. 

Colonel: I have the honor to acknowledge the receipt of your note 
of the 27th ultimo, concerning the reciprocal privilege of trade-marks 
registration in the the United States and Switzerland. 

It gives me much pleasure to accept your declaration as evidence 
that the law of Switzerland affords such a guaranty of reciprocity in 
the matter as will make the application of the privileges of the act of 
Congress of March 3, 1881, to owners of trade-marks in Switzerland 
proper and certain. 

This exchange of notes accomplishes the end in view of securing 
complete reciprocity under the legislation of the respective countries, 
and I have therefore communicated your note to the Secretary of the 
Interior, with this reply, and requested him to make the necessary 
regulations for admitting Swiss trade-marks to all the privileges of 
registration which under that act pertain to the trade-marks of Amer- 
ican origin. 

Now that the immediate object of our late correspondence on the 
subject is attained, permit me to suggest that with a view to rendering 
the engagements of this Government with foreign nations as uniform 
as possible the Government should be pleased to conclude and sign 
with you a formal trade-marks convention, similar to that lately con- 
cluded with Spain, to which I have before referred and of which I 
inclose a printed copy herewith. 

Our present diplomatic accord will, of course, hold good until such 
formal convention can be made effective by ratification and exchange. 

Accept, Colonel, a renewed assurance of my highest consideration. 

John Davis, Acting Secretary. 



Chaptee XIX. 

FOREIGN COUNTRIES WHICH PROVIDE BY LAW FOR THE REG- 
ISTRATION OF TRADEMARKS. 



The following list of countries which provide by law for the regis- 
tration of trademarks and for the protection of registered marks 
against infringers, together with the note which follows the list, is 
taken by permission from Greeley's Foreign Patent and Trademark 
Laws (Washington, 1899): 

Argentine Republic: Laws of August 14, 1876; July 31, 1897. 

Austria: Laws of January 6, 1890; June 10, 1891. 

Belgium: Law of April 1, 1879. 

Bolivia: Law of November 25, 1893; amended March 24, 1897. 
. Brazil: Law of October 14, 1887. 

British New Guinea: Law of 1894. 

British South Africa (Rhodesia, Mashonaland, and Matabeleland) : Laws of 1893 
and 1894. 

Bulgaria: Law of December 15-27, 1892; amended December 21, 1893-January 2, 
1894. 

Canada: Law of May 15, 1879; amended March 26, 1890. 

Cape Colony: Law of 1877; amended July 5, 1895. 

Ceylon: Law of December, 1888; amended April 16, 1890. 

Chili: Law of November 12, 1874. 

Congo Free State: Law of April 26, 1888. 

Costa Rico: Law of May 22, 1896. 

Denmark: Law of April 11, 1890; amended December 19, 1898. 

Dutch East Indies: Law of September 30, 1893. 

Dutch West Indies: Law of September 30, 1893. 

Fiji Islands: Law of April- 22, 1886. 

Fmland: Law of February 11, 1889. 

France: Law of June 23, 1857; amended May 3, 1890. 

Germany: Law of May 12, 1894. 

Great Britain: Laws of August 25, 1883; August 23, 1887; December 24, 1888, and 
May 11, 1891. 

Greece: Law of February 10-22, 1893. 

Guatemala: Law of November 23, 1897. 

Hawaii: Law of June 23, 1888. 

Hongkong: Laws of December 9, 1873; August 7, 1890. 

Hungary: Law of February 4, 1890. (See law of 1890 of Austria.) 

Italy: Laws of August 30, 1868, and January 16, 1898. 

Jamaica: Laws of 1888 and 1889. 

Japan: Law of March 1, 1899. 

Labuan: Law of November 1, 1893. 

Leeward Islands: Law of 1887. 

Luxemburg: Law of March 28, 1883. 

Mauritius: Law of October 20, 1868. 

Mexico: Law of November 28, 1889, amended December 17, 1897. 

Natal: Laws of 1885 and October 24, 1888. 

Netherlands: Law of September 30, 1893. 

Newfoundland: Law of May 9, 1888. 

New South Wales: Law of May 26, 1865; amended 1893. 
340 



OOUNTEIES WHICH HAVE TEADEMAEK LAWS. 341 

New Zealand: Law of September 2, 1889. 

Norway: Law of May 26, 1884. 

Orange Free State: Law of 1891. 

Paraguay: Law of August 5, 1892. 

Peru: Law of December 19, 1892; amended December 31, 1895. 

Portugal: Law of May 21, 1896. 

Queensland: Laws of October 13, 1884, and November 5, 1890. 

Roumania: Law of April 15-27, 1879. 

Russia: Law of February 26-Marcli 9, 1896. 

Servia: Law of May 30-June 11, 1884. 

South African Republic: Law of May 31, 1892. 

South Australia: Law of 1892. 

Spain: Laws of November 20, 1850; July 11, 1851; September 1, 1888, and February 
12, 1889. 

Sweden: Lawsof July 5, 1884; November 28, 1884; February 20, 1885; March 5, 1895; 
December 31, 1895; March 5, 1897, and June 25, 1897. 

Switzerland: Law of September 26, 1890; amended July 30, 1895. 

Tasmania: Law of September 29, 1893. 

Trinidad and Tobago: Law of November 19, 1894; amended 1897. 

Tunis: Law of June 3, 1889. 

Turkey: Law of May 10, 1888. 

Uruguay: Law of March 1, 1877. 

Venezuela: Law of May 24, 1887. 

Victoria: Law of July 10, 1890; amended December 19, 1890. 

Western Australia: Law of October 10, 1894. 

In practically all the British possessions, other than those above named, in which 
provision is made by law for registration of trademarks, the merchandise marks act 
of 1887 of Great Britain has, either in precise terms or in substance, been put in 
force. Under this act forging or falsely applying a trademark to goods is made a 
punishable offense. The British possessions in which such law has been adopted 
without requirement of or provision for registration are: Barbados, Bermuda, British 
Guiana, British Honduras, Falkland Islands, Gibraltar, Gold Coast, Grenada, India 
(British), Lagos, St. Lucia, St. Vincent, Sierra Leone, and Straits Settlements. 

In Malta fraudulent use of a trademark is punishable under the criminal law. In 
Colombia fraudulent use of a trademark is punishable under the penal code, and 
though not specifically authorized by law, a register of trademarks is kept. In Egypt 
trademarks are protected against infringement by the courts. In China the trade- 
marks of foreigners will, to some extent at least, be protected againts infringement 
through diplomatic action. 

In all of these countries in which no provision is made for registration it is gen- 
erally found of importance for the owner of a trademark to give ample notice to the 
public of his claim to the exclusive right to the mark by publishing the mark in 
newspapers. The protection afforded in these countries is in the nature of protection 
against unfair competition rather than protection of the property right in the mark. 



Chapter XX. 

EXTRACTS FROM THE REPORT, DATED MARCH 16TH, 1888, OF THE DEPARTMENTAL 
COMMITTEE APPOINTED BY THE (BRITISH) BOARD OF TRADE ON FEBRUARY 
24TH, 1887, '*T0 INftUIRE INTO THE DUTIES, ORGANIZATION, AND ARRANGE- 
MENTS OF THE PATENT OFFICE UNDER THE PATENTS, DESIGNS, AND TRADE- 
MARKS ACT, 1883 (46 AND 47 VICT., C. 57), SO FAR AS RELATES TO TRADE- 
MARKS." 



REPORT. 



The complaints which have been made to us of the working of the 
act of 1883 and the suggestions which have been submitted of amend- 
ments in the law and its administration have had reference both to 
the registration of trade-marks and designs. We propose to deal with 
these matters separately, directing attention first to the subject of 
trade-marks. 

I. — ^Trade-marks. 

1. We propose first to consider the suggestions which have been 
made for improvements of procedure in relation to the registration of 
trade-marks. 

* * * . * * * * 

15. We have given very careful consideration to the evidence which 
has been laid before us by those interested in the trade of Lancashire* 
The number of marks registered in classes 23, 24, and 25, which are 
commonly described as the cotton classes, is very large, and the 
administration of the act in relation to these classes is of great impor- 
tance to the trade. There can be no doubt that the working of the 
trade-marks act has not given satisfaction in Lancashire. Even if at 
times there may have been a disposition to expect too much, we think 
there have been substantial grounds for the dissatisfaction which has 
prevailed. The great bulk of the goods manufactured in Lancashire 
in respect of which trade-marks are used is exported to other countries, 
and there can be no doubt that these marks fulfill important functions 
in the trade between Lancashire and India and other countries. One 
chief complaint has been that the usages of the trade and the character 
of the markets where the marks are intended to serve their purpose 
have not been sufficiently kept in view by the patent office. By sec- 
tion 72, subsection 2, the comptroller is directed not to register, with 
respect to the same description of goods, a trade-mark so nearly 
resembling a trade-mark already on the register with respect to such 
description of goods as to be calculated to deceive. It is on the ques- 
tion whether marks do so nearly resemble one another as to be calcu- 
lated to deceive, and what extent of resemblance to an old mark ought 
to cause the rejection of an application, that the chief difference has 
arisen between the trade and those to whom the administration of the 
act has been intrusted. The tendency of the office has been to con- 
strue the words of the enactment more favorably towards applicants 
for new marks than the trade have thought right. We think the 
difference has arisen in part from the wording of the act. 

342 



REPORT OF BRITISH BOARD OF TRADE. 343 

The comptroller has felt unable to say that the tw marks ' ' so nearly " 
resemble each other as to be calculated to deceive. He has thus not 
considered himself at liberty to take into consideration to the extent 
that he otherwise might, the character of the market in which the 
mark is to serve its purpose. Two marks, when placed side by side, 
may exhibit many and various differences, yet the idea left upon the 
mind by both may be the same, so that a person acquainted with the 
mark first registered, and not having the two side by side for compari- 
son, might well be deceived, if goods were allowed to be impressed 
with the second mark, into a belief that he was dealing with goods 
which bore the same mark as that with which he was acquainted. 
Take, for example, a mark representing a game of football; another 
mark may show the pla3^ers in a different dress, and in very different 
positions, and yet the idea conveyed by each might be simply a game 
of football. It would be too much to expect that persons dealing 
with trade-marked goods, and relying, as they frequently do, upon 
the marks, should be able to remember the exact details of the marks 
upon the goods with which they are in the habit of dealing. 

In order to avoid misapprehension in the future we recommend, 
even though it may not be absolutely necessary, a slight amendment 
of the act, substituting for the words '"''so nearly resevibling^'' the 
words ^^ having such resemhlance to;^'' and, further, we would suggest 
that when the question arises whether a mark applied for bears such 
resemblance to one on the register as to be calculated to deceive, it 
should be determined by considering what is the leading characteristic 
of each. The one might contain many, even most, of the same ele- 
ments as the other, and yet the leading, or it may be the only impres- 
sion, left on the mind might be very different, whilst, on the other 
hand, a critical comparison of two marks might disclose numerous 
points of difference and yet the idea which would remain with any 
person seeing them apart at different times might be the same. 

In this connection we may refer to a point which has been the sub- 
ject of considerable controversy, namely, how far registered or com- 
mon marks when combined together are to be regarded as a new 
mark. We think that the juxtaposition of two or more such marks 
is not, if there be nothing more than this, a combination constitut- 
ing a new mark. An important test appears to be whether the exist- 
ing marks are so combined as to suggest a new idea. For instance, 
assuming a cat and a fiddle to be each an old mark, we do not think the 
mere representation of a cat and a fiddle together would be a new 
mark, but the representation of a cat playing upon a fiddle, the idea 
conveyed by which would be neither the cat nor the fiddle, but a cat 
playing upon a fiddle, would be a good combination, and might prop- 
erly be registered. We think this view differs somewhat from that 
which has been at times, at all events, entertained by the board of 
trade, but it appears to us to be the sound one. 

Where several common or open marks are worked into a single new 
design by being grouped together within a border or otherwise, we 
think that such a combination may be entitled to registration, but that 
it would be well to require that all the common elements should be 
disclaimed. 

******* 

18. We have had under our serious consideration the question whether 
it would be expedieni and possible to provide for the registration of what 

S, Doc. 20 23* 



344 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

are known in the cotton trade as line headings. It is clear that it could 
only be done by an alteration of the law, making, in that case, the 
colors used an essential part of the registered mark. There appears 
to be a somewhat general concurrence of view that if it were practica- 
ble to provide effectually for the registration of these headings it 
would be desirable to do so, but the most opposite opinions were 
expressed by persons of large experience in the Manchester trade on 
the point whether it would be practicable. We are disposed to concur 
with those who pronounce it impracticable, but whether this view be 
correct or not we clearly cannot recommend the adoption of a scheme 
the practicability of which is open to such serious doubt. At the same 
time we are fully conscious of the evils to which our attention has 
been directed. Woven line headings no doubt play an important part 
in many markets. They become associated in the minds of buyers 
with the make of a particular manufacturer or the merchandise of a 
particular merchant, and goods bearing particular marks obtain on 
account of their proved quality a high reputation in the market. 
Thereupon some other manufacturer or merchant sends to the very 
market where he knows this reputation has been acquired goods of an 
inferior quality bearing, not the identical heading, but one so resem- 
bling it as to leave on the mind of a person seeing it the same impres- 
sion. He is thus enabled to undersell the merchant who originally 
introduced the mark to the market, whilst still securing a good profit 
for himself on account of the inferior quality of his goods, and this 
process often goes on until the very mark which gained the reputation 
is shunned by the buyers who at one time valued the goods to which it 
was attached. 

Even those witnesses who have felt most strongly the impossibility 
of protecting line headings by registration have admitted the magni- 
tude of the evil, and that these resemblances of headings, of which 
complaint is made, are not accidental but intentional. We are satisfied 
that not only do individual traders incur loss from this cause, but that 
the trade of Lancashire suffers from it. 

The imitation of headings, however, is not the only mode by which 
this kind of false representation is successfully carried on. We have 
had before us pieces of cloth each of which bore different trade-marks, 
tickets, words, figures, and other marks, but on which those trade-marks, 
tickets, &c. , were so colored and distributed as to convey the impres- 
sion, in the absence of careful examination, that the goods bore the 
same marks. No one looking at those pieces of cloth could doubt that 
the resemblance was intentional, and was designed for the very pur- 
pose of deceiving. Although we arrived at the conclusion that it would 
not be possible to give to line headings the protection of registration, 
we felt that the fraudulent trading to which our attention had been 
called ought not to remain unchecked, and that something ought to be 
done to remedy a state of things so detrimental to sound and honest 
trading. We therefore procured the insertion in the merchandise- 
marks act of a clause having for its object to bring these frauds within 
the penalties of the law, and thus to check their practice. The clause 
has been the subject of a good deal of criticism, and feome alarm has 
been expressed lest it should press hardly on persons acting with per- 
fect honesty. We do not think this is likely to be the case. It is, of 
course, difficult so to frame a law as to make it effectual against wrong- 
doers, and at the same time to guard those who have no unlawful 



REPORT OF BRITIBH BOAllD OF TRADE. 3tl:5 

intention from all possible risk of inconvenience. The operation of 
the net must, no doubt, be carefully watched, and it may well be capa- 
ble of amendment, but we could not resign ourselves to the conclusion 
that mischievous frauds must be allowed to continue without even an 
attempt to put a stop to them. 

* ****»♦ 

24. We will next proceed to consider the objections which have been 
taken to the law which now governs what may be registered as trade- 
marks, and the important suggestions which have been made for its 
amendment. 

25. By section 64 (1) (c) of the act a trade-mark may be registered 
which consists of or contains ''a distinctive device, mark, brand, head 
ing, label, ticket, or fancy word, or words not in common use." Some 
controversy has arisen with reference to the meaning of the word 
"brand" as distinguished from the other words employed. There can 
be no doubt that the term derives its origin from the practice of pro- 
ducing some mark by means of burning, but it appears now to be in 
use in certain trades for the purpose of describing trade-marks no 
longer produced in this way, and differing in no respect from the 
labels or tickets mentioned in the section; nevertheless, a distinction 
has been made in the practice of the office, and trade-marks have been 
allowed registration in certain trades as brands when they would not 
be accepted in other classes as labels or tickets. We see no reason for 
this distinction. It does not appear to us to receive support from the 
language of the act, and we think that in future brands should be dealt 
with in precisely the same way as labels or tickets. 

26. The most difficult question which has arisen upon the enactment 
under consideration is to determine what may properly be regarded 
as "fancy words." Words are, undoubtedl}^, a most popular form of 
trade-mark, but some limit must obviously be put upon the words 
which an individual may be permitted to register and claim the exclu- 
sive use of. The expression "fancy word" is certainly not a happy 
one, and has naturally given rise to considerable differences of opinion 
as to its meaning. 

It will be convenient to consider first what words ought to be 
allowed as trade-marks. There can be no objection to permitting the 
registration of an invented word not to be found in the vocabulary of 
our own or any other country. It seems to us, further, that existing 
words may with advantage be permitted as trade-marks, subject to 
limitations which at once suggest themselves. It is manifest that no 
one ought to be granted the exclusive use of a word descriptive of the 
quality or character of any goods. Such words of description are the 
property of all mankind, and it would not be right to allow any indi- 
vidual to monopolize them and exclude others from their use. 
Again, geographical words which can be regarded as descriptive 
of the place of manufacture of or sale of the goods are open to 
obvious objections. One manufacturer or merchant can not properly 
be allowed to prevent all his competitors from attaching to their 
goods the name of the place of their manufacture or sale. The mis- 
chief would not be the same where the person seeking to register was 
the first who had manufactured or sold the goods in the place the 
name of which he seeks to appropriate as a trade-mark. But there 
are objections to giving a monopoly even in that case, and to attempt 



346 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

to draw any such distinction would be likely to lead to difficulty and 
litigation. "We think, therefore, that geographical names ought only 
to be permitted where they clearly could no' be regarded as indicative 
of the place of manufacture or sale. We would add upon this point 
that we think that where any English word would be rejected as not 
entitled to registration, no person ought to be permitted to register 
its translation into any other language. The question has been raised 
whether a word having the same sound as one entered on the register, 
though differently spelt and with a different meaning, should be regis- 
tered. The question in such a case would seem to be whether the 
resemblance between the old mark and that applied for was such as to 
be calculated to deceive; if it were, it ought, of course, to be rejected. 

Our attention had been called to the rejection of words which it is 
said indicate the use to be made of the articles to which they are to be 
applied; as, for example, ''Mariner's rum." We think that if the 
word sought to be registered would be understood as suggesting a 
special use of the goods, or their adaptability to a particular purpose, 
it would be objectionable as descriptive of their character. 

Kegistration, it appears, is sometimes sought of devices which are 
descriptive of the goods to which they are to be adapted, e. g., a 
representation of a hinge to be applied to doors. We think these are 
not legitimate marks. 

Complaints have also been made that where words have been refused 
as not being distinctive, they have afterwards been allowed where the 
applicant has applied for a mark consisting of the same word preceded 
by the applicant's name with an apostrophe. We think this course 
ought not to be pursued. Little or no mischief might result where 
the name of the applicant was an uncommon one, but where the name 
was a common one the result would be to deprive all persons bearing 
the same name of their right to use a common word in connection 
with their own name, and even if the name were an uncommon one it 
would be impossible to say that there were not other persons bearing 
it who might wish to use it in connection with the common word 
which it is sought to monopolize. 

Evidence has been given that marks consisting of a combination of 
the applicant's name with the article he manufactures or sells are 
highly valued. There can be no doubt that if a manfacturer or 
vendor has obtained for his goods a reputation among the public he 
could, by process of law, quite apart from the trade-marks act, pre- 
vent goods that were not his from being offered to the public on the 
1 epresentation that they were so. But it would be quite a different 
thing to give, by virtue of registration under the trade-marks act, a 
right to prevent another manufacturer or merchant honestly describ 
ing his own goods by his own name. 

It is said that there is often a desire to register short phrases, such 
as proverbs, etc., and that owing to the difficulty of finding new 
marks it is expedient that they should be allowed. We see no objec- 
tion to this, provided that they are in no way descriptive of the char- 
acter or quality of the goods, or of their place of origin, sale, or 
manufacture. 

There is said to be a general, if not unanimous, desire among those 
interested in the cotton classes that words should not be permitted 
to be registered as trade-marks in classes 23 and 24. If the desire 
be so general as is represented, we see no reason in principle why it 



REPORT OF BRITISH BOARD OF TRADE. 347 

should not be 3^ielded to. But there appears to bo a serious difficulty 
in the wa}^ of making such a change at present, owing to the interna- 
tional convention which has been entered into. We understood that 
word marks are registered in the cotton classes in some of the coun- 
tries which are parties to the convention; and there would be an 
anomaly in permitting such marks to be registered here when first 
registered in those countries, w^hile registration is denied them if 
first applied for in England. 

27. By section 64, subsection 2, there may be added to any one or 
more of the essential particulars, "any letters, words, or figures, or 
combination of letters, words, or figures, or any of them." There is 
here, it will be seen, no limitation as to the letters, words, or figures 
which may be combined with the essential part of a trade-mark. By 
section 74, however, it is provided that nothing in the act shall be con- 
strued to prevent the Comptroller registering as an addition to any 
trade-mark "any distinctive word, or combination of words, though 
the same is common to the trade in the goods with respect to which 
the application is made." But this section enacts, subsection 2, that 
" the applicant for entry of any such common particular or particulars 
must, however, disclaim in his application any right to the exclusive 
use of the same, and a copy of the disclaimer shall be entered on the 
register." It has been said, and we think truly, that it is not easy to 
understand what is the exact status of the added matter provided for by 
section 64. Where the added words are not common to the trade in 
the goods with respect to which the application is desired, the right of 
exclusive use need not be disclaimed, yet it is presumed that the pro- 
prietor of the trade-mark coulH not object to their use by any other 
person except in connection with the essential particular of his trade- 
mark. What purpose, then, do they serve ? Perhaps they may be use- 
ful in the case of a colorable imitation of the essential particular. If 
with such an imitation the same added words were used it would assist 
the proprietor in establishing that his trade-mark had been infringed. 
But the added matter ma}^, it is assumed, be of so distinctive a charac- 
ter as to form an essential part of the trade-mark, so that its use might 
be an infringement. We think it would clearly be desirable that the 
added matter, which the proprietor does not claim the exclusive use 
of, should be disclaimed, so that the public may know exactly what is 
the trade-mark registered. We think, too', that all disclaimers should 
appear in connection with the mark in the official journal. Some mis- 
apprehension might perhaps arise if the person registering the mark 
were compelled to disclaim his own name or the foreign equivalent for 
it. We think, therefore, this might be excluded from the necessity 
of disclaimer, but it should be provided that the proprietor of the 
mark should not thereby acquire the right to prevent any other person 
bona fide using his own name in connection with his goods. 

* * * * * * * 

41. It has been suggested that there is a necessity for some statutory 
definition of the trade-mark rights which are acquired in connection 
with words used as the names of patented articles. Where a patent 
has been obtained for some article of commerce, and the patentee 
gives it a name which he registers as his trade-mark, has he a right at 
the end of the term of his patent to prevent other people from selling 
it under that name? It is clear that he obtains the patent upon the 



348 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

condition that at the expiration of the term of his monopoly the public 
should have the right to manufacture and use it, and if the only name 
by which it is known is that which the proprietor has registered as a 
trade-mark, it would certainly seem inconsistent with the right thus 
intended to be conferred on the public if everyone except the original 
patentee were prevented from calling it or from selling it by that 
name which alone it bears. The authorities appear, however, to show 
that such a claim could not be maintained. 



II. — Designs. 



March 16, 1888. 



Herschell. 

Crawford. 

Macnaghten. 



A. J. Mundella. 
H. DE Worms. 
James F. Hutton. 



Chapter XXI. 

LEGISLATION PROVIDING FOR THE REGISTRATION AND PRO- 
TECTION OF COLLECTIVE TRADEMARKS. 



A. — Legislation of certain foreign countries m reference to collective 

trademarks. 

Section 1, 

FRANCE. 

(Law of November 26, 1873.) 

Article 1. Any owner of a trademark registered in accordance 
with the law of June 23, 1857, shall be permitted, on written applica- 
tion, to have placed by the State, on the labels, bands, or wrappers of 
papers, or on the labels or impressions in metal in which the mark 
appears, a special stamp, printed or impressed, intended to affirm the 
authenticity of such mark. 

The impressed stamp shall be placed on the mark which is applied, 
directly to the goods, if in the opinion of the Government it can be so 
applied. 

Art. 7. The printed or impressed stamp placed on a trademark 
becomes an integral part of the mark. 

If the Government fails to prosecute, either in France or abroad, the 
counterfeiting or falsification of the said printed or impressed stamp, 
the prosecution may be carried on by the owner of the mark. 



Section 2. 

GERMANY. 
(Imperial decree of March 16, 1872.) 

* * * I authorize all German manufacturers to make use of a 
reproduction of the imperial eagle in the form prescribed by my decree 
of August 3 of last year, type No. 2, to distinguish their articles of 
merchandise or labels. * * * {Eeichs-Gesetzblatt^lS'l^,^. ^0.) 

349 



350 ee vision of statutes relating to patents, etc. 

Section 3. 
great bbitain. 

(Patents, Designs, and Trademarks act, 1883.) 

Art. 81. (11) A body of persons, corporate or not corporate, may 
(notwithstanding anything in any act relating to the Cutlers' Company) 
be registered in the Sheffield register as proprietor of a trademark or 
trademarks. 



Section 4. 



JAPAN. 

(Law of March 1,1899.) 

Art. XXI. Any mark of traders' associations sanctioned by proper 
authority, when desired for an exclusive use as a trademark, may be 
registered under this act. 

The mark registered according to the last-preceding paragraph shall 
be deemed as a registered trademark. 



Section 5. 
portugal. 

(Law of May 21, 1896.) 

Art. 66. Marks may be registered in favor of a person, a firm, a 
joint stock company, a corporation, or an individual. 

Art. 81. The proprietor or proprietors of a mark who desires, for 
the better guaranty of his goods, the addition of the stamp of the 
State impressed, punched, or branded, must present with his applica- 
tion the labels, packages, or articles in question, paying for this service 
a sum which shall be fixed by regulation. 

Art. 82. The stamp establishes a legal presumption of the genuine- 
ness of the marks to which it is applied. 

Art. 83. The stamp shall be applied in the department of industry 
or other place which may be appointed. 

Art. 84. The application for the affixing of the stamp must be 
signed by the person who effected the registration, or be accompanied 
by a power of attorney from the proprietor, or by a document prov- 
ing the ownership of the mark to be stamped. 



collective trademarks. 351 

Section 6. 

SWITZEELAND. 
(Law of September 26, 1890.) 

Art. 7. The following may register their marks: 

^ * * * * * * 

(3) Associations of manufacturers, producers, and traders who sat- 
isfy the condition above stated under (1) and (2),^ and possess legal 
competency (capacite civile),^ as well as public authorities. 

B. — Legislation of States of the United States in reference to the regis- 
tration and pi'oteetion of collective trademarlcs. 

[From Greeley's Foreign Patent and Trademark Laws, Washington, 18995 by permission.] 

The following States provide by law for the registration of trademarks 
by any person, or association, or union of workingmen, and for the 
punishment, by fine or imprisonment, of infringers: 

Delaware, act of March 29, 1893. 

Georgia, act of December 20, 1893. 

Idaho, act of March 12, 1897. 

IlHnois, act of June 13, 1895. 

Indiana, acts of March 6, 1891, and March 8, 1897. 

Iowa, act of March 26, 1892. 

Louisiana, act of July 8, 1898. 

Maine, act of March 28, 1893. 

Maryland, act of April 4, 1892. 

Massachusetts, act of June 4, 1895. 

Michigan, act of May 24, 1895. 

Minnesota, act of February 23, 1895. 

Missouri, act of March 20, 1893. 

Montana, Sander's Penal Code, 1895. 

New Hampshire, act of March 13, 1895. 

New Jersey, act of March 15, 1898. 

Ohio, acts of March 30, 1892, and May 1, 1894, Revised Statutes, 1890. 

Oklahoma, act of March 11, 1897. 

Tennessee, act of February 3, 1897. 

Utah, act of March 8, 1894. 

Wisconsin, act of April 9, 1895. 

The following States provide by law for the registration of trade- 
marks only by associations or unions of workingmen and for the pun- 
ishment of infringers b}^ fine or imprisonment: 

Kansas, act of March 11, 1791. 

Kentucky, acts of April 16, 1892, and March 8, 1894. 

Nebraska, Laws of 1891, chapter 15. 

Pennsylvania, act of May 21, 1895. 

South Dakota, act of March 7, 1890. 

^ With respect to location either lq Switzerland or in a country which accords reci- 
procity to Swiss citizens. 

2 In order to be competent under the law such associations must be enrolled on the 
commercial register. This provision permits also the creation of municipal or regional 
marks, which may be made. use of only by manufacturers or producers located in a 
locahty noted for its manufactures or agricultural products (message of the federal 
council of January 28, 1890) . {Eecueil General, p. 572, note.) 



Chapter XXIL 
TRADEMARK LAW OF GERMANY, WITH NOTES THEREON. 



LAW FOB THE PROTECTION OE MERCHANDISE MARES.^ 

(May 12, 1894.) 

[Text of the law from the translation published in the Official Gazette of the United States Patent 
Office. Notes and rules translated for this report by Mr. Greeley from Recueil Qtntral de la legisla- 
tion, etc., published by the International Bureau of Industrial Property.] 

Section 1. Any person who desires to use in his business a mer- 
chandise mark to distinguish his goods from those of others may 
declare it for registration in the Roll of Marks. ^ 

Sec. 2. The Roll shall be kept at the Patent Office. « The declara- 
tion of a mark shall be made in writing to the Patent Office. Every 
declaration must be accompanied by a statement of the enterprise for 
which the mark is to be employed* and a specification of the merchan- 
dise for which it is intended/ as well as a distinct representation of 
the mark and a description thereof so far as it may be necessary.^ 

The Patent Office shall prescribe rules concerning other require- 
ments of the declaration. 

A fee of 30 marks (about $7.50) shall be paid with the declaration 
of each mark, and at each renewal of the declaration a fee of 10 marks. 

^ Although this law is to a large extent devoted to marks of manufacture and com- 
merce properly so called, we use the term inerchandise mark in order to give an equivalent 
for the German term Waarenzeichen, which has been substituted for that of Fabrik- und 
Handelsmarke, employed in the old law. 

^The old law applied only to establishments enrolled on the register of commerce. 
The new law applies to all persons carrying on any industry or trade whatever, 
including mining operations, agriculture, d'elevage, etc. Excluded from the pro- 
tection of the law are those who are merely hand reapers, dealers in real estate and 
in matters relating thereto. ( Contra Seligsohn, p. 25. ) 

The protection is extended to signs placed on the article or on the package, excluding 
the mere form of the article or the package (for example, toilet soap or a flask of a 
particular shape). 

The external appearance of the article or the package is nevertheless not wholly 



deprived of all protection. (V, sec. 15. ) 
^ Under the system of the old ' 



system of the old law marks were registered by the tribunals charged 
with keeping the commercial registers. 

*A mark may be registered even before the business for which it is intended is 
established, but in such case the registrant is liable to have the cancellation of his 
mark asked for on the ground that it has not been used. 

^The old law permitted registration of a mark for a list of goods. 

It is left very largely by the spirit of the law to the Patent Office to rule upon this 
matter. (Report of the parliamentary commission.) 

^The Patent Office may, if it is considered desirable, require that a description be 
filed with the application. As far as this is concerned, the applicant may on his own 
motion file a description and it is considered good practice to do so. 
352 



TRADEMARK LAW OF GERMANY. 353 

If registration does not result from the first declaration, 20 marks of 
the fee shall be refunded. 

Sec. 3. The Roll of Marks shall contain, first, the date of receipt of 
the declaration; second, the facts required to accompany the declara- 
tion by the first paragraph of section 2 of this law; third, the name 
and domicile of the proprietor of the mark and of his representative,^ 
if any, as well as changes in the person, the name or the domicile of 
the proprietor of the mark or his representative; fourth, the date of 
renewal of the declaration; fifth, the date of cancellation of the mark. 

The Roll shall be free to public inspection. 

Every registration and cancellation will be officially published.^ The 
Patent Office will publish periodically abstracts of registrations and 
cancellations. 

Sec. 4. Registry on the roll will be refused for free marks {Freizei- 
chen^) as well as for those merchandise marks, first, which consist 
exclusively of letters or numerals* or of words containing indications 
of the mode, time or place of production; or of the quality, destination, 
price, quantit}^ or weight of the merchandise;^ second, which contain 
the arms of German or foreign States, or those of a locality, parish, or 
union of towns situated in the country;^ third, which contain scandal- 
ous representations, or indications evidently at variance with the facts 
and liable to cause deception. '^ 

Canceled marks cannot be registered anew in favor of another than 
the last proprietor for merchandise identical or analogous with that 
for which they were registered, until after two years from the date of 
cancellation. 

Sec. 5. If the Patent Office shall regard that any declared mark is 
in conflict with one previously declared for similar merchandise under 
the law of November 30, 1874, or under the present law, it shall advise 

^Foreigners not resident in the country must be represented by an attorney. The 
attorney should be appointed by a written power of attorney, which may be in a 
foreign language. 

^The pubhcation of the registration is made from time to time in the Reichanzeiger 
and also by periodic lists in the Waarenzeichenblatt. 

^The Patent Office has defined free marks as follows: "Considered as free marks 
in the sense of the law, according to the present judicial practice, should be all marks 
w^hich, at the time at which they were filed, were already in use either generally or 
in particular commercial circles, to designate the kinds of merchandise for which the 
mark was intended or analogous kinds." The Patent Office indicates from time to 
time in its official journal marks to which it attributes this character and has in 
preparation a general list of them. The decisions of the Patent Office in this regard 
are binding on the courts. 

^Letters and numerals are excluded even if they are in little known languages, as 
Chinese or Hebrew. But characters drawn from obsolete languages (hieroglyphics, 
expressions from savage tribes) would probably be registrable. 

Letters and numerals presented in distinctive form are registrable. 

^The new law admits marks consisting in invented names, which were excluded 
by the law of 1874, and protects not only combinations of them and their distinctive 
appearance, but even their sound. 

^This text permits the use as marks of the arms of localities in foreign countries. 
It is for the Patent Office to decide whether a mark comprises forbidden coats of arms. 
As to foreign marks, see section 23, last paragraph. 

Nevertheless, any one may use such arms as marks if duly authorized to do so by 
one who has the right. 

'The Patent Office requires proof of the correctness of the statements included in 
the mark (date of establishment, medals, appointment as purveyor to a court, etc.). 
It is well to avoid the mention of facts of only temporary significance (patent, design 
patent). (See also sections 1, 2, and 23, which give other grounds for refusal of 
registration.) 



354 REVISION OF STATUTES RELATINO TO PATENTS, ETC. 

the owner of the earlier mark. If within a month he shall make no 
opposition to the registr}^ of the new declared mark, it may be regis- 
tered. In the contrary case the office shall determine whether there 
is an actual conflict. 

The omission of the notice contemplated in the preceding paragraph 
shall not constitute claim for indemnity. 

Sec. 6. If the decision (sec. 5, par. 1) be that there is no conflict 
between the marks, the new declared one may be registered. If the 
decision be that conflict exists, registration shall be refused in case the 
declarant shall desire to establish his right to registry notwithstanding 
the conflict, he must do so by action against the opposing party. 
Registry efiected by virtue of a decision in his favor shall be efi'ective 
as of the date of his original declaration.^ 

Sec. 7. The rights resulting from the declaration or registry of a 
merchandise mark pass by inheritance, and can be transmitted to other 
persons b}^ testamentary disposition. They cannot however pass to 
others but with the business to which the mark appertains.^ The 
transfer shall be entered on the Roll of Marks at the instance of the 
successor, provided the assent of the original owner is satisfactorily 
established. If the original owner is deceased the successor must 
establish his title. 

The new owner cannot benefit by the rights accruing from registra- 
tion until the transfer has been recorded in the Roll of Marks. 

Decisions and judgments of the Patent Office which require to be 
notified to the proprietor of a mark must be addressed to the proprie- 
tor of record. If he is deceased the Patent Office may, at its discre- 
tion, consider the notice as given, or cause search to be made for the 
heirs, in order to notify them. 

Sec. 8. A mark can be canceled from the Roll at any time on the 
demand of the owner. 

Cancellation will take, place by Office action, first, when ten years 
shall have expired since the declaration or renewal of the mark; sec- 
ond, when the registration should have been refused. 

When there is a question of cancellation without the request of the 
owner, the Office shall give him notice. If he does not repl}" within a 
month the mark shall be canceled.^ If he replies the question shall be 
decided by the Office. If such cancellation is under consideration by 
reason of expiration of the term of ten j^ears, it will not take place, if 
within one month from the notice, the owner of the mark shall renew 
it by the payment of 10 marks in addition to the renewal fee, when 
the renewal shall be regarded as having taken place at the expiration 
of the preceding term. 

^ The action brought in such cases can not be taken on the question of similarity of 
marks, there being no appeal from the decision of the patent office on this question. 
One ought then to base it on all the rights that the api^licant can establish against 
his opponent. 

^ A change of proprietorship does not necessitate a transfer of the mark if the name 
of the establishment is unchanged. 

A general agent does not have the power to bring an action for counterfeiting a 
mark. It is otherwise with one who has a concession of sale of an article within a 
certain territory. 

The transfer of the mark takes effect from the date of the contract and not from 
the date of the registration. 

^Even if, in the interval, the patent office becomes satisfied of the insufficiency of 
the reason alleged as the ground for cancellation. 



TRADEMARK LAW OF GERMANY. »^55 

Sec. 9. A third part}^ ma}^ demand the canceling of a merchandise- 
mark, first, if b}^ Adrtue of a prior declaration the mark has been reg- 
istered in his name for similar merchandise in the Roll of Marks or in 
the registers of marks kept under the law of November 30, 1874; second, 
if the enterprise to which it appertains has not been maintained by the 
owner of record; third, if facts establish that the contents of the mark 
do not agree with actual conditions, and are liable to mislead.^ 

When a mark, excluded from registry under the law of November 
30, ISTtt,^ has been considered in commercial circles up to the enact- 
ment of this law as the distinctive sign of the merchandise of a partic- 
ular concern, and this mark has been entered in the Roll of Marks in 
the name of another person under this law, the owner of said concern 
shall have until October 1, 1895, to demand its cancellation. If the 
demand is granted the mark may be registered in the Roll in the name 
of the applicant before the expiration of the period fixed by section 4. 

The demand for cancellation is to be made in the form of an action 
at law^ against the record owner, or against his heirs if he is deceased. 

If, before or after the beginning of the action, the mark has been 
assigned the decision shall be effectually operative as regards the 
assignee. The provisions of sections 63-66 and 73 of the Code of Civil 
Procedure apply to the right of the assignee to intervene in the suit. 
In the second case contemplated in the first paragraph of this section, 
the demand for cancellation may be addressed in the first place to the 
Patent Office, which shall give notice thereof to the person registered 
as proprietor. If he makes no opposition in one month the mark shall 
be canceled. If he makes opposition, the applicant may prosecute his 
demand for cancellation b}^ an action at law. 

Sec. 10. Declarations, assignments for record, and objections to can- 
cellation, will be dispatched by a summons and a decision, as in the 
procedure concerning patents. In the case contemplated in section 5 
there will be no summons. 

An appeal is open to the applicant from a rejection of his applica- 
tion, and also to the owner of a mark from a decree of cancellation in 
the face of his protest. These appeals are to be filed in the Patent 
Office within a month of notice.* 

Notifications concerning registry, assignment or cancellation of 
marks shall be given by registered letter. If notification can not be 
given in Germany, it shall be sent by mail as provided in sections 161 
and 175 of the Code of Civil Procedure. 

Sec. 11. The Patent Office shall give opinions upon questions con- 
cerning registered merchandise marks on request of the courts, when 
the inquiry relates to a legal proceeding in which experts differ. 

Sec. 12. The effect of registration of a mark shall be to confer on 
the registrant the exclusive right to affix the mark to merchandise of 

^ Action may be taken in such case even if the facts are not evident at first view. 
(See sec. 4 above.) 

2 Two classes of marks come under this head: First, those which were excluded on 
account of their nature (invented words, for example) ; second, those whose owners 
were not enrolled on the commercial register. 

'This action is carried on before the Amtsgericht if the amount involved does not 
exceed 300 marks; if the amount involved is greater, before the commercial chamber 
of the Landgericht. 

* The ground of the appeal need not be explained. It may be based on grounds 
other than those given in the application for cancellation. The period within which 
appeal may be taken begins with the day of the notice and terminates with the cor- 
responding day of the following month. When this day falls on a holiday the period 
is extended to the following day. 



356 EEVISION OF STATUTES EELATING TO PATENTS, ETC. 



the species named in the declaration, or to its wrappers or envelopes; 
to put on the market goods so marked; and to employ the mark on 
advertisements, price lists, business letters, press notices, invoices, and 
analogous matter.^ 

In case of cancellation no right shall be inferred from registration 
for the period during which the cause of cancellation existed. 

Sec. 13. Registration of a mark shall not prevent an 3^ person from 
employing, even in an abridged form, on his goods or on their 
inclosure, his name, firm name, or residence, nor indications concern- 
ing the mode, time or place of manufacture, or the quality, destina- 
tion, price, quantity or weight of the goods, nor from making use of 
similar indications in trade. 

Sec. 11:. If any person shall knowingly or by gross carelessness 
illegally apply to his goods or their inclosures, or to his advertise- 
ments, business letters, price lists, and the like, the name or firm name 
of another or a mark protected under the present law, or shall put in 
circulation or on sale merchandise thus illegally marked, he shall be 
bound to indemnify the injured party. ^ If he shall commit this act 
knowingly he shall be further punished by a fine of 50 to 5,000 marks, 
or imprisonment not exceeding six months. Penal action shall not 
proceed but on complaint, and it may be withdrawn.^ 

Sec. 15. If any one with the intent to cause deception in commerce, 
shall without authority use upon goods, or their inclosures, or on adver- 
tisements, price-lists, business letters, press notices, invoices, etc., a 
device considered in commercial circles as the distinctive sign of 
another person's similar merchandise; or if any one with the same 
intent, shall put in circulation or offer for sale goods so marked, he 

^ The law of 1874 assigned all these effects to the deposit of the mark; the new law 
attributes them to the registration. The date of the deposit is then of importance 
only as determining priority in case of interference. 

2 The different actions which may be taken by the owner of a mark are as follows: 

First. To apply for its cancellation (sec. 9). 

Second. To establish judicially that the adverse party has no right to the mark 
(sec. 12). 

Third. Action to restrain acts contrary to his right {actio negatoria) (sec. 12). 
This should be directed against the person who is actually responsible. The extent 
of the trouble caused or the purpose of the person responsible are of little impor- 
tance so far as this action is concerned. 

Fourth. Action for damages (sees. 14 and 15). 

Fifth. Criminal prosecution (sees. 14 and 15). 

Sixth. Seizure and confiscation of foreign products imported or in transit (sec. 17). 

Seventh. Application for indemnity (jBitsse) (sec. 18). 

The protection of the law extends even to acts committed abroad with reference 
to a mark registered in Germany, provided the jurisdiction of a German court can 
be established. (Reichsg., October 10, 1886; crim., March 18, 1884.) 

It is unlawful to afiix a mark, without the authority of the person entitled thereto, 
in Germany, on goods intended exclusively for sale abroad, even if the consignee in 
the foreign country has the right to that mark there. (Reichsg. crim., March 18, 
1884.) 

As concerns the personal or commercial name, protection is given only to the form 
used in Germany; a transposition in another language (Loewenthal and Lovendal) 
is not considered illegal. (Reichsg., May 27, 1889.) A name is protected even if it 
has not been entered on the register of commerce, provided it can be justified on the 
ground of prolonged exclusive use. It makes little difference if the name usurped is 
used on goods of a class different from those of the proprietor of the name. 

The fact of emptying receptacles (for example, bottles of cognac) into a common 
.receptacle (in order to avoid a higher rate of duty) and afterwards refilling these 
receptacles with the same product constitutes a case of counterfeiting. (Reichsg. 
crim., December 17, 1892.) 

^ A simple attempt not successfully carried out is not punishable. 



TRADEMARK LAW OF GERMANY. 357 

shall be bound to indemDify the injured party, and shall be liable to a 
fine of from 100 to 3,000 marks, or imprisonment not exceeding three 
months. Penal action shall only take place on a complaint, and it may 
be withdrawn by the plaintiff/ 

Sec. 16. Any one who, with intent to cause deception as to the 
quality or value of goods, shall have falsely affixed thereto, or to their 
wrappers or envelopes, or used in his advertisements, price-lists, busi- 
ness letters, press-notices, invoices, etc., the arms of a State,^ or the 
name or arms of a locality, community or more extended communal 
union, and any one who with the same object shall have put in circu- 
lation or offered for sale goods so marked, shall be liable to a fine of 
from 50 to 5,000 marks, or imprisonment not exceeding six months. 

The emplo3aiient of names, which by the usages of trade serve to 
designate certain goods without indicating their origin, does not come 
within the scope of this provision. 

Sec. 17. Foreign goods unlawfully marked with the name of a Ger- 
man firm^ or place* or with a merchandise mark registered in the Roll 
of Marks, shall be liable to seizure and confiscation upon entry into 
German}^ for importation or transit, on the demand of the injured party, 
who shall give security. Seizure may be effected by the officers of 
custom and revenue.^ Confiscation shall be adjudged by a penal 
decision of the executive authority, (sec. 459, Code of Penal Procedure.)^ 

Sec. 18. In lieu of the damages contemplated in this law, on the 
demand of the injured party, there may be awarded in excess of the 
penalty an indemnity {Biisse) to be paid to him not exceeding 10,000 
marks. Persons condemned to pay this indemnity are held for it 
jointly. The allowance of this indemnity excludes all other claims for 
damages.^ 

Sec. 19. On a condemnation under sections 14, 15, 16, or 18, the 
judgment shall order the illegal mark effaced from all articles in pos- 
session of the condemned.^ If it cannot be otherwise done, the 
destruction of the goods may be ordered. 

In case of a penal condemnation there shall be accorded to the injured 
party in the cases contemplated in sections 14 and 15 the privilege of 
publishing the judgment at cost of the convicted party. The judgment 
shall determine the nature of the publication and the period within 
which it shall be made. 

Sec. 20. The application of the provisions of this law shall not be 

prevented by any modifications that may be employed in the reproduc- 

« ■ — — 

^ This provision permits of protecting packages and other distinctive features which 
can not oe registered as marks (bottles, baskets, boxes, envelopes, etc.). At the 
same time, in case of conflict between a registered mark and a special external appear- 
ance given to a product, the latter can not in any case be protected as against the 
mark. 

^The name of a State is not forbidden to be used by the text of tLc law, because it 
indicates nearly always the kind and not the origin of the goods. 

'Is the personal name of a manufacturer forbidden as well as his commercial name 
(firma)? The law does not state, although a statement of the grounds speaks of the 
personal name as well as of the commercial name. 

*This expression should be taken in the sense of locality and not of country or 
region. 

* These authorities are authorized to proceed officially to make provisional seizure 
in case of doubt. 

^Subject to appeal to the local tribunal having jurisdiction {Amisgericht). 

"The demand for an indemnity {Busse) may be withdrawn, provided judgment 
has not been pronounced and a civil action for damages and interest substituted. 

"It matters little whether he is the owner of these articles or not; but articles 
which have passed into the hands of third parties are not subject to this provision. 



358 REVisioisr of statutes relating to patents, etc. 

tion of foreign names, firms, marks, arms, and any other distinctive 
signs of merchandise, if, in spite of such modifications, the possibility 
of mistake is not avoided/ 

Sec. 21. In civil suits in which b}^ complaint or rejoinder a claim is 
made founded on the provisions of this law the hearing and final deci- 
sion shall be referred to the Imperial Court under section 8 of the 
introductory act to the judicature law.^ 

Sec. 22. Whenever German goods introduced into a foreign country 
either as imported or in transit, shall be required to be marked to show 
their German origin, or shall be treated less favorably by officers of 
customs than the goods of any other country in respect to the marks 
the}" are required to bear, the Federal Council is empowered to impose 
a corresponding charge upon foreign goods on importation into Ger- 
many or introduced for transit, and it msiy ordain the seizure and con- 
fiscation of the goods in case of contravention. Seizure shall be made 
b}^ the customs and revenue officers. Confiscation shall be adjudged 
by a penal decision of the executive authorities, (sec. 459, Code of Penal 
Procedure.) 

Sec. 23. A person not having an establishment in Germany can have 
a claim to the protection of this law only when according to a publica- 
tion in the Reiclis- Gesetz-Blatt^ the State in which his establishment is 
situated accords to German merchandise marks protection to the same 
extent as to domestic marks. 

The protection of a merchandise mark and the rights resulting from 
registry can be claimed only through the medium of a proxy residing 
in the countr}^ Such prox}^ shall have power to represent his princi- 
palin the procedure before the Patent Office under this law, as well as 
in civil actions concerning the mark; he shall also be empowered to 
institute penal actions. Either the court within whose protection the 
proxy is domiciled or that of the place where the Patent Office is situ- 
ated is competent to try suits against the registered owner of a mark. 

Any one who shall make declaration of a foreign mark, will have to 
show at the same time that he has applied for and obtained legal pro- 
tection for it in the State where his establishment is situated. Unless 
otherwise provided in international conventions, registration cannot 
take place if the mark does not satisfy the requirements of this law.^ 

^ The settled practice of the courts forbids all imitation capable of producing confu- 
sion in the mind of the consumer. A mark is protected ipso facto in all colors; on 
the other hand, color is an essential element when the imitation of the external 
appearance given to a product is in question. 

^ Up to 300 marks these matters are within the jurisdiction of the Amtsgerichte, 
otherwise they are considered by the chambers of commerce of the Landgerichte. 

^Compare section 12 of the patent law of April 7, 1891. The former law protected 
only traders having their principal establishments in Germany; the new law does 
not refer to any obligation of an establishment, and from this it may be held that a 
person not a trader or a trader who has only an unimportant branch establishment 
in the country may have the benefit of the law. But there is difference of opinion 
on this point. 

The application of this article possibly presents some difficulties as regards coun- 
tries with which Germany had, prior to 1894, concluded treaties of reciprocity. Pro- 
tection is assured by a publication of September 22, 1894, to the following countries; 
Austria-Hungary, Belgium, Brazil, Bulgaria, Denmark, France, Greece, Great Britain, 
Italy, Luxemburg, Netherlands, Roumania, Russia, Serbia, Sweden and Norway, 
Switzerland, United States, and Venezuela. 

The new law protects marks during the period fixed by section 8 without regard to 
the protection in the country of origin. The foreign mark must fulfil the conditious 
fixed by the German law, 



TRw^DEMARK LAW OF GERMANY. 359 

Sec. 24. The provisions of the law of November 30, 1874, for the 
protection of marks, shall up to October 1, 1898, continue applicable to 
merchandise marks registered in conformity with said law. At an}^ 
time up to October 1, 1898, these marks may ])e declared for registry 
in the Roll of Marks as provided in this law, and shall be subject to 
all its provisions. Registry cannot be refused to marks inserted in 
the Registry of Marks under an ancient provincial law. The registra- 
tion shall be made without expense and as of the date of the first 
declaration. With respect to the contents of the first registration a 
certificate must be produced from the authority formerly presiding 
over registration. 

Protection hitherto assured to merchandise marks shall expire when 
registry has been efi'ected on the Roll of Marks, or, in default of reg- 
istry, on October 1, 1898. 

Sec. 25. Necessary rules for the execution of this law in matters con- 
cerning the organization and conduct of business at the Patent Office, 
as well as the procedure to be followed therein, shall be established by 
an imperial ordinance with the assent of the Federal Council. 

Sec. 26. This law shall go into force the 1st of October, 1891. 

From that date declarations of merchandise marks will no longer be 
accepted under the law of November 30, 1871, for the protection of 
marks. 



EEftUIEEMENTS OP THE PATENT OFFICE RESPECTING THE DECLARATION OF 

MERCHANDISE MARKS. 

[Translated for this report by Mr. Greeley from La Propriele Industrielle, June 30, 1899.] 

(November 22, 1898.) 

Sec. 1. The declaration of a merchandise mark must be made in the 
form of a written petition to which the necessary documents should be 
joined as annexes. 

Each mark must be made the subject of a special petition. 

Sec. 2. The petition must be presented in single copy and must 
contain : 

{a) A statement of the name and domicile or the location of the prin- 
cipal establishment of the person declaring the mark; 

(b) A statement of the kind of commerce in which the mark in to be 
used; 

{c) A petition asking that the mark be registered in the roll of 
marks; 

{d) A statement setting forth that the legal fee of 30 marks has been 
paid to the treasury of the Patent Office of the Empire or that it will 
be paid upon filing the declaration; 

{e) A list of the annexes, with a statement of their numerals and 
their contents; 

(f) If the person declaring the mark has appointed a representative, 
a statement of the name, business and domicile of such representative; 
a power of attorney must be filed as an annex; 

(g) The signature of the person declaring the mark or of his repre- 
sentative. 

Sec. 3. The petition must be accompanied by twelve specimens or 
fac-similes of the mark. Two of these must be pasted separately on 
half sheets of paper bearing a cancel. 

S. Doc. 20 24* 



360 REVISION OF STATUTES RELATING TO PATENTS, ETC 



The specimens should be executed neatly and so as to be durable 
and the essential features of the mark must be clearly recognizable. 
If the fac-simile of the mark is modified during the prosecution of the 
case, it will be necessary before registration to file new specimens or 
to state that the print obtained from the typographical block is to be 
taken as constituting the fac-simile of the mark. 

The size of the fac-simile must not exceed 33 cm. in height and 25 
cm. in width. Fac-similes of larger size, such as posters and other 
like objects are treated as samples. In such case, it is necessary either 
to file fac-similes reduced to a small scale, or to state that the print 
obtained from the typographical block is to be taken as constituting 
the fac-simile of the mark. 

The fac-simile of the mark must be executed on paper printed on 
one side only. 

In case of marks which consist of words only, for the fac-simile of 
the mark may be substituted a statement, in the petition, of the word 
in question, together with a statement that the print obtained from 
the typographical block is to be taken as constituting the fac-simile of 
the mark. 

Sec. 4. The petition must be accompanied by a list in duplicate of 
the goods for which the mark is intended. If this list is not long, it 
may be included in the petition. 

This list must include the names of only such goods as are usual in 
the commercial circles interested. 

Sec. 5. If the person declaring the mark deems it necessary, or if 
the Patent Oflfice requires it, a description of the" mark in duplicate 
should be joined to the petition. 

Sec. 6. In the case above provided for, it is necessary to show mod- 
els and specimens of goods bearing the mark, or reproductions of the 
mark in the form in which it is used in commerce, and this in one 
example only. Objects of such nature as to be easily broken must be 
filed in substantial packings. Objects of small size must be placed on 
stiif paper. 

Sec. 7. On the filing of the petition, or on notice given thereafter to 
the person who declares the mark, the latter must file a typographical 
block (cliche) intended for use in printing the mark typographically, 
which must reproduce neatly and distinctly all its essential features 
including written matter. It is necessary to file a typographical block 
even in case of marks composed entirely of words. 

The typographical block (cliche) must consist of a wood cut, or a 
zinc plate or electrotype and have a thickness of 2.4 cm. 

Its dimensions must not exceed 6.5 cm. in height or width. In 
exceptional cases if the Patent Office considers it necessary for clear- 
ness of reproduction, it may be permitted to be of larger dimensions. 

The typographical block must in any case be in a single piece. 

If a mark is to be registered several times, a special block must be 
furnished for each registration. 

If it is expressly asked, the Patent Office will undertake to make the 
block or to reproduce an existing block, at the expense of the person 
who declares the mark. 

The block filed should be accompanied by two specimens of the print 
of the mark obtained from it. 

Sec. 8. The objects annexed to the petition and especially the models, 
specimens and reproductions and the tj^pographical block should bear 
an indication showing to what petition they belong. 



TRADEMARK LAW OF GERMANY. 361 

The written documents intended to be communicated to other per- 
sons should be furnished in sufficient number of copies. 

For ail written documents substantial white, opaque paper sliould be 
used; those w^hich contain requests or relate to the declaration itself 
must be on sheets 33 cm. by 21 cm. 

All documents must be perfectly legible. The}^ must be written in 
ink of good color. Tj^pewritten documents must be printed in clear 
characters with sufficient spaces between the letters, the words and the 
lines. 

The documents relating to the declaration which are filed later must 
bear the name of the person who declares the mark and the number of 
the case to which they relate. 

INFORMATION. 

By a publication of this date the Patent Office of the Empire has 
prescribed, for carr^dng out the provisions of section 2, paragraph 2, 
of the law for the protection of merchandise marks of May 12, 1894, 
new requirements concerning the filing of merchandise marks. As 
supplementing these requirements, the Patent Office publishes the fol- 
lowing statements which will give interested parties fuller information 
for effecting the filing of declarations of merchandise marks. 

1. Fees. 

The filing fee should be paid directh^ to the treasury of the Patent 
Office of the Empire (Berlin, N. W., Luisenstrasse, 32-31:,) or should 
be sent there b}" postal order with a precise statement of the declara- 
tion to which the payment relates. 

It is not desirable that the money should be sent with the declaration 
as an annex. But if it is so sent, the petition should indicate this fact 
clearty in red ink. If a remittance includes the money for several 
declarations, there should be joined to it a special statement showing 
the purpose for which the money is sent. 

2. Petition. 

(a) If the petitioner intends to avail himself of rights flowing from 
a previous declaration effected in a country with which the German 
Empire has concluded a treaty on the subject, he should expressh^ so 
state in the petition. 

(h) The personality of the person who declares the mark must be so 
stated that there can be no doubt as to whether the registration of the 
mark is asked by an individual or a company, by a man or a woman, 
in a personal name or in the name of a commercial firm. If the matter 
concerns individuals the given name should be stated and in addition 
for women their status and their maiden names. 

The statement of domicile should include in cities; the name of the 
street and the house number; for smaller places, for those the name 
of which is often found, and as a rule for foreign localities; the name 
of the country and the district. This applies also to cases in w^hich 
the person declaring the mark has appointed a representative. 

(c) In case the person declaring the mark has appointed a repre- 
sentative, it should be noted that under the terms of section 8 of the 
Imperial ordinance of July 30, 1894, the power of attorney must be 
given to a person capable of entering an appearance and designated 
by personal name and not by a firm name. 



362 REvisioisr of statutes kelating to patents, etc. 

The signature of the person declaring the mark to the power of 
attorney must be legalized if the Patent Office expressl}^ requires it. 

{d) When several persons jointly make a declaration without appoint- 
ing a common representative, they must indicate to which one of them 
official communications should be sent. 

o. Models and Specimjens. 

In filing models and specimens, it should be stated, in cases in which 
the administration may dispense with these objects, whether they 
should be returned or may be destroj'^ed. 

If the models or specimens are of special value, this should be stated 
in the letter accompanying them. If the}^ are liable to be damaged 
by carelessness in unpacking, or injured by exposure to light, to damp- 
ness, &c. , a clearl}^ legible statement should be placed on the package 
"to be used in the case without opening." 

4. In General. 

{a) In all written documents the unnecessary use of foreign words 
should be avoided. 

(b) Documents of se^veral pages should be paged. In all documents 
there should be at the left a margin of at least 5 cm. for official notes. 

{c) In all correspondence which includes annexes the latter should 
be specially enumerated. 

{d) Communications to the Patent Office should reach it without 
expense. In sending mone}^ or packages the postage should be pre- 
paid b}^ the sender. 

{e) One can not, as a rule, obtain receipts except for the declarations 
of marks and only one copy of these is sent. The sending of receipts 
is conditional on the furnishing, by the sender, of a paper, substan- 
tiall}^ as follows: 

Your declaration of 

Or, 

The declaration of of the date of respecting the follow- 
ing merchandise mark: 

[Fac-simile of the mark.] 

was received by the undersigned office on the and has been applied to the 

prosecution of case No. . 

If the receipt is not placed on the back of a postal card, it should be 
accompanied b}^ an addressed envelope. 

(f) A receipt for the amount of the fees sent by mail will be given 
only in case the sender expressly requests it. 



Chapter XXIII. 
TRADEMARK LAW OF FRANCE, WITH NOTES THEREON. 



LAW RESPECTING MARKS OF MANUFACTURE AND COMMERCE. 

(June 23, 1857.) 

[Text and notes translated for this report by Mr. Greeley from Recueil General de la legislation, etc., 
published by the International Bureau of Industrial Property.] 

Title I. — Of the right of property in marks. 

Art. 1. The use of marks of manufacture or commerce is optional. 

Nevertheless, decrees, enacted in the form of regulations of public 
order, may in exceptional cases declare marks obligatory for products 
specified by them. 

The following are considered marks of manufacture and commerce, 
names in a distinctive form, designating terms {denominations.) sym- 
bols, impressions, stamps, seals, vignettes, reliefs, letters, figures, 
wrappers, and all other signs serving to distinguish the products of a 
factory or objects of commerce.^ 

Art. 2. No one may claim exclusive property in a mark, if he has 
not deposited for registration two specimens of the mark with the 
.clerk of the tribunal of commerce of his domicile.^ 



^It has been judicially settled that the enumeration of Art. 1 is purely inclusive, 
and that while it mentions the signs most commonly used, it does not exclude others. 
Broadly stated, any sign, provided that it is distinctive, whatever may be its nature, 
may be a mark. 

It has been decided, for example, that the form of the wrapper of a product, as 
well as its color, or any other special characteristic, may serve as a mark if the same 
sign has not alreadv been made use of in the same kind of industry or commerce. 
(V. Cass. Cir. April 30, 1899, Prop. Indust. 89, p. 143. ) 

^To take this article literally, it would seem that the property resulted solely from 
depositing the mark for registration. This is not its meaning. It is well understood 
from the discussion of the law, and from a jurisprudence that has never hesitated to so 
hold, that the depositing for registration is simply declarative and not attributive of 
property in the mark. The depositing for registration has for its purpose to warn 
others of the right claimed in the mark and j^Iace them in the position of acting in 
bad faith if they usurp it, and of laying a foundation for the penalties provided by 
the law. The usurpation of a mark which has been regularly deposited for registra- 
tion is a penal offense; the usurpation of a mark which has not been deposited for 
registration is only an act of unfair competition — that is to say, a civil offense or a 
quasi offense. 

The tiling for registration, in another sense, while it does not create the property in 
the mark, preserves it and is sufficient in and of itself to preserve it without any 
obligation on the part of its proprietor to actually make use of it or to place it on 
goods. The filing for registration gives him the right to use the mark when and as 
he may choose, it being left to the courts to decide from the circumstances of the 
case whether, as a question of fact, he has forfeited the benefit of such filing. (V. 
Cass. Cir., December 1, 1890, Prop. Indust, 1891, p. 152.) 

As to the formalities required in depositing for registration, these have been modi- 
fied by the law of May 3, 1890 (v. infra, p. 368), which particularly requires that 

363 



364 EE VISION OF STATUTES BELATING TO PATENTS, ETC. 

Art. 3. The effect of depositing for registration continues in force 
for fifteen years only. 

The property right in the mark may always be preserved for an 
additional term of fifteen years by means of a new depositing for 
registration.^ 

Art. 4. There is required a fee of one franc for drawing up the 
statement of registration of each mark and for the cost of the duplicate 
not including the cost of the stamp and of registration. 

Title II. — Provisions relative to foreigners. 

Art. 5. Foreigners who have in France establishments of manufac- 
ture or commerce may enjoy, for the products of their establishments, 
the benefits of the present law, by complying with its requirements.^ 

Art. 6. Foreigners and French citizens whose establishments are 
located out of France shall have an equal right to the benefits of the 
present law, for the products of their establishments, if in the country 
in which they are located, reciprocity for French marks has been 
established by diplomatic conventions.^ 

In such case foreign marks must be deposited for registration with 
the clerk of the tribunal of commerce of the Department of the Seine.* 

three specimens be filed instead of two and that a typographical block (cliche) of 
the mark be filed. 

The Government may be a manufacturer (the monopolies of tobacco and matches 
establish this fact) ; it can therefore deposit a mark for registration as if it were a 
private individual, in the same form, and may claim in the same way an exclusive 
right therein. 

^Acts of usurpation which take place between the expiration of a first registration 
and its renewal are, as we have stated in the preceding note, acts of unfair competi- 
tion only. It is therefore important for the protection of the property in the mark 
that the proprietor take care to renew his registration before its expiration. It is 
clear that the law permits, as is reasonable, the perpetuity of the property in the 
mark. 

2 The law makes a distinction between foreigners who have an establishment on 
French territory and those who have not. The former, without any condition of reci- 
procity, are admitted to the privileges of French citizens; the latter can not claim these 
privileges unless in their country reciprocity is accorded to French citizens. French 
citizens, when their establishments are located in a foreign country, are treated as 
foreigners of the country in which their establishments are located. Thus the law 
makes no distinction between French citizens and foreigners. 

Article 6 requires that reciprocity be established by a diplomatic convention; but 
this is modified by article 9 of the law of November 26, 1873 (v. infra, p. — ), which 
declares that reciprocity may be established by law as well as by a treaty. 

^ See note 2 under article 5. 

* By making use of the expression "foreign marks" {les marques etrangeres) the 
law clearly points out that what it is intended to protect for the person whose estab- 
lishment is located in a foreign country is the mark which he then has protection for 
and in the same form in which it is then protected. It must be understood that the 
foreigner or the French citizen who is in the same position with a foreigner as regards 
his mark is given even more right in France than in the country where he conducts 
his manufacture or his commerce. (V. Paris, May 18, 1892, Frop. Indust. 93, p. 48. V. 
also rej. Cass., May 21, 1874, Ann. 74, 173; Paris, August 19, 1881, Ann. 81, 289; rej. 
Cass. January 17, 1885, Ann. 86, 53; trib. cir. Nancy, July 16, 1890, Prop. Indust. 93, 
p. 148.) 

Unless he has deposited his mark for registration with the clerk of the tribunal of 
commerce of the Seine, the foreigner has no right to claim the benefit of the law of 
1857 (V. Aix, February 7, 1889, Prop. Indust. 90, p. 28), but it is certain that he has 
always time to make this deposit for registration and to prosecute, by virtue of such 
deposit, acts of usurpation which take place thereafter, if he has not otherwise lost 
the property right in his mark. 

A statistical statement prepared by the international bureau {Y. Prop. Indust., 
93, p. 128) shows that in the year 1892 out of 6,255 marks deposited for registration 
in France 216 only belonged to manufacturers located out of France. 



trademark: law ov frat^oe. 365 

Title III. — Penalties. 

Art. 7. The following persons shall be puinished by a fine of 50 to 
3000 francs and imprisonment from three months to three ^^ears or 
by one of these penalties only: 

1st. Those who have counterfeited a mark or made use of a counter- 
feit mark. 

2nd. Those who have with fraudulent intent affixed to their prod- 
ucts or the articles in which they trade a mark which belongs to another. 

3rd. Those who have knowingly sold or offered for sale one or more 
articles bearing a counterfeit mark or one aflfixed with fraudulent 
intent.^ 

Art. 8. The following shall be punished b}^ a fine of 50 to 2,000 
francs and imprisonment of from one month to one j^ear, or by one of 
these penalties only: 

1st. Those who without counterfeiting a mark have with fraudulent 
intent made an imitation of it of such nature as to deceive the pur- 
chaser, or have made use of a mark imitated with fraudulent intent.^ 

2nd. Those who have made use of a mark bearing indications cal- 
culated to deceive the purchaser as to the nature of the product.^ 

Third. Those who have knowingly sold or offered for sale one or 
more products bearing a mark imitated with fraudulent intent or 
bearing indications calculated to deceive the purchaser as to the nature 
of the product. 

^Counterfeiting refers to direct and complete reproduction of the mark; when 
the mark ia not servilely copied but is imitated only, it is' still an offense and is 
punishable mider the following article. It is also to be said that when a mark con- 
sists in a word, the fact that the person who usurps it adds other signs does not pre- 
vent this being considered counterfeiting in the sense of article 7. It is judicially 
settled, after comparison of the text of articles 7 and 8, that counterfeiting is pun- 
ishable, even if the counterfeiter shows that he acted in good faith; the offense 
is an infraction of the lav>^ in any case. Whoever reproduces a mark, especially 
printers of labels, is bound to first make such investigation as may be necessary to 
determine whether it has been registered. (V. Cass. Civ., January 16, 1889, Prop. 
IndusL, 90, p. 9.) 

^The author of the law thus explains article 8: 

"Persons do not counterfeit a mark, they imitate it. If the marks consist of let- 
ters, they take other letters, but preserve the same general forms ; if it consists of the 
appearance of the package, by the use of colors they simulate differences; or when 
they use the same word that is used by a manufacturer they add in a form more or 
less noticeable the words ' made by. ' These frauds are innumerable and they are 
effected in a thousand ways; but the courts know how to recognize them and they 
have the power to effectually put a stop to them. Article 8 punishes, in a word, 
those who, without counterfeiting a mark, have made a fraudulent imitation of it of 
such a nature as to deceive the purchaser or have made use of a mark imitated with 
fraudulent intent." The imitation punished by article 8 includes every imitation 
which by its resemblance, by its general appearance, is of a nature to create con- 
fusion and to lead the purchaser into error. (V. Pouillet 3farq. defab., Nos. 181 et 
seq.; V. also Donai, July 19, 1887, Prop. IndusL, 1888, p. 27; trib. cass., Seine, 
November 29, 1889, Prop. IndusL, 90, p. 91, comp. trib. cass., Lille, July 11, 1887, 
Prop. /ndMS^., 88, p. 16.) 

^It is to be understood (V. Pouillet Marq. de fab., No. 361, Mayer, de la Concur- 
rence deloyale, No. 133) that in this paragraph the word mark is used in a general 
sense and that all indications, borne by products, when they are of a nature to 
deceive the purchaser as to the nature of the product constitute the offense provided 
for and punished by paragraph 2 of article 8. This does not refer to a technical 
trademark which has been registered. This article, according to the author of the 
law himself, has with it only a resemblance in words; it has for its purpose to com- 
plete article 423 of the penal code and to assure the repression of deceit or attempt 
to deceive, provided for by that article, when it is effected by the aid of a mark 
whether registered or not. (V. cass. crim. , January 21, 1892, Prop. IndusL, 93, p. 10.) 



866 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Art. 9. The following shall be punished b}^ a fine of 50 to 1,000 
francs and imprisonment from fifteen daj^s to six months, or by one of 
these penalties only: 

First. Those who have failed to place on their products a mark 
which has been declared obligatory. 

Second. Those who have sold or offered for sale one or more prod- 
ucts not bearing the mark declared obligator}^ for this kind of 
products. 

Third. Those who have contravened the provisions of decrees made 
in execution of article 1 of the present law. 

Art. 10. The penalties pro\dded by the present law shall not be 
cumulative. 

The extreme penalty is inflicted only for all the facts anterior to the 
first prosecution. 

Art. 11. The penalties provided for in articles 7, 8, and 9 may be 
doubled in case of a repeated offense. 

The offense is a repeated one when within five 3^ears preceding sen- 
tence has been pronounced against the accused for an offense provided 
for b}^ the present law. 

Art. 12. Article 463 of the penal code may be applied to offenses 
provided for by the present law. 

Art. 13. Offenders ma}^ in addition, be deprived of the right to 
participate in elections of tribunals and chambers of commerce, advi- 
sory chambers of arts and manufactures, and councils of prud'hommes, 
for a period not to exceed ten 3^ears. 

The tribunal may order the judgment to be posted in such places as 
it ma}^ determine and its insertion in whole or in extract in newspapers 
which it may designate, all at the expense of the offender.^ 

Art. 11. Confiscation of the products bearing marks which are 
decided to be contrar}?^ to the provisions of articles 7 and 8 ma}^, even 
in case of acquittal, be ordered b}" the tribunal as well as of instru- 
ments and utensils specially intended to be used in committing such 
offense. 

The tribunal maj" order that the products confiscated be turned over 
to the proprietor of the mark which has been contemplated or f raudu- 
lentl}' affixed or imitated independently of other damages that may be 
awarded. 

It shall order in all cases the destruction of marks decided to be 
contrary to the provisions of articles 7 and 8.^ 

Art. 15. In the case provided for by the first two paragraphs of 
article 9, the tribunal shall always order that the marks declared 

^ The posting of the judgment is considered not as a punishment, but as a civil 
reparation, and so considered the civil tribunals do not hesitate to order it. The code 
of civil procedure, as to this matter, contains an article (art. 1036) which gives the 
tribunals the right to order the printing and posting of their judgments. 

^ Confiscation is not obligatory on the court as in case of patents; it is, on the con- 
trary, optional. But it is the duty of the judge, even if he does not believe it his 
duty to decree the confiscation of the products bearing the counterfeit mark, to order 
in all cases the destruction of the counterfeit i lark. Notwithstanding the obligatory 
character of this provision, it has been held that the party who has not asked the 
application of i.his measure before the inferior court can not complain before the 
court of cassation if this destruction has not been ordered. (V. rej. cass., April 13, 
1877,78,1,439.) 

In subjecting to confiscation the instruments and utensils specially intended to be 
used to commit the offense, the law does not intend to include printing material — the 
press, for instance — but the lithographic stone, the engraved plate, the stamps, seals, 
molds, etc. , bearing the counterfeit mark and capable of reproducing it. 



trademaek: law of franoe. 367 

obligatory shall be placed on the products to which they are made 
applicable. 

The tribunal may order the confiscation of the goods, if the offender 
has, within the five preceding years, been convicted of any offense pro- 
vided for by the first two paragraphs of article 9. 

Title IV . — Jurisdiction. 

Art. 16. Civil actions respecting marks are prosecuted before the 
civil tribunals and are determined by the courts.^ 

In case of an action brought under criminal procedure, if the offender 
raises in his defense questions which concern the right of property in 
the mark, the tribunal of police for the trial of his misdemeanors decides 
upon this pleading. 

Art. 17. The proprietor of a mark maj^ cause to be made by any 
officer of the law {hidssier), with or without seizure of the goods, an 
inventory of the goods which he claims are marked in contravention to 
the provisions of the present law, under an order of the president of 
the civil tribunal of first instance, or of a justice of the peace of the 
canton, if there is no tribunal in the place where he finds the goods 
which are to be inventoried or seized. 

This order is issued upon request and on presentation of the written 
statement establishing the registration of the mark. In it should be 
named, if the case requires it, an expert to aid the officer in his inven- 
tory. 

When seizure of the goods is asked, the judge ma}^ require of the 
applicant a bond to be recorded before making the seizure. 

There must be furnished to the persons in possession of the goods 
inventoried or seized a copy of the order and of the record of the filing 
of the bond, in default of which the whole proceedings may be void 
and the officer may be liable for damages. 

Art. 18. If the applicant fails to make such provision, either accord- 
ing to the civil or the criminal procedure, within a period of fifteen 
days, increased b}^ one day for each 50 kilometers of distance between 
the place where the goods inventoried or seized are found and the domi- 
cile of the party against whom the proceeding must be brought, the 
inventory or seizure is wholly void, without prejudice to the damages 
which may be received, if the case calls for it. 

Title V. — Genera I and te?77/porary provisions. 

Art. 19. All foreign products bearing the mark or the name of a 
manufacturer located in France, or an indication of the name or loca- 
tion of a French manufacturing establishment, are forbidden to be 
imported and excluded from right of transit or of warehouse, and may 

^ A foreigner, admitted under article 6 to the benefit of the law, may bring a for- 
eigner before the French courts for the purpose of securing an order canceling a mark 
which interferes with his; the law of June 23, 1857, must, in effect, be considered a 
law according to all those entitled to invoke it protection against infractions of its 
provisions committed in France; and, the registration of foreign marks being effected 
with the clerk of the tribunal of commerce of the Seine, it follows from article 16 not 
only that the French tribunals have the power to take cognizance of such action, but 
also that the action must be brought before the civil tribunal of the Seine. (Paris, 
August 2, 1893, Prop. IndusL, 93, p. 160.) 



368 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

be seized either at the instance of the administration of customs or at 
the request of the public prosecutor or of the injured part}^^ 

In case the seizure is made at the instance of the administration of 
customs, the papers relating to the seizure shall be sent at once to the 
public prosecutor. 

The period within which the action provided for by article 18 must 
be brought under penalty of the seizure being null and void, whether 
brought by the injured party or by the public prosecutor, is limited 
to two months. 

The provisions of article 14 are applicable to goods seized under the 
provisions of the present article.^ 

Art. 20. All the provisions of the present law are applicable to 
wines, brandies, and other beverages, to animals, grains, flour, and 
generally to all agricultural products.^ 

Art. 21. All registration of marks effected through the clerk of the 
tribunal of commerce prior to the present law shall continue in force 
for fifteen years, to date from the day on Avhich the said law takes 
effect. 

Art. 22. The present law shall not take effect until six months after 
its promulgation. The administration of public affairs shall determine 
by regulation the formalities to be complied with for the registration 
and publication of marks, and all other measures necessary for carr}^- 
ing the law into effect. 

Art. 23. Provisions heretofore in force are not repealed except so 
far as they are contrary to the present law. 



LAW OF MAY 3, 1890, MODIFYING ARTICLE 2 OF THE LAW OF JUNE 23, 1857, 
RESPECTING MARKS OF MANUFACTURE AND COMMERCE. 

Article 2 of the law of June 23, 1857, respecting marks of manu- 
facture and commerce, is modified as follows: 

No one shall claim exclusive property in a mark if he has not depos- 
ited for registration with the clerk of the tribunal of commerce of his 
domicile: 

First. Three specimens of a representation of the mark. 

Second. A typographical block (cliche) of the mark. 

^The question has arisen whether article 19 was applicable to the case where, by 
the order of a manufacturer located in French territory, his mark, his name, or the 
indication of his manufacturing establishment had been affixed to goods manufac- 
tured for him and by his order in a foreign country. The judicial decisions on the 
question have varied. After having held that in this case there was no contravention 
of the law (V. Paris, November 6, 1863, Ann. 63, 353; Rouen, January 29, 1864, Ann. 64, 
71; rej. cass., April 9, 1864, Ann. 64, 256; Circul. Minist. of June 8, 1864), the courts 
have decided the question in precisely the opposite way. (V. rej. cass., February 28, 
1884, Ann. 84, 208; Lyons, July 1, 1885, Ann. 88, 93; Besangon, April 2, 1887, Ann, 88, 
95; Circul Minist. of February 26, 1886, Prop. Indust.,86, p. 37. ) 

^Article 19 does not seem to provide any remedy for the acts which it has in view 
other than that of confiscation. Nevertheless, Pouillet (v. Marq. de fab., No. 325) 
expresses the opinion that to import into France goods bearing a false mark is in 
reality to make use of the mark and renders one liable to the penalties provided by 
articles 7- and 8. 

^The law has in view here all natural products; it takes in wines, brandies, and 
other beverages which are in reality manufactured products, and does not speak of 
mineral waters, which, because they are not included under agricultural products, 
are none the less capable of being protected like all other articles of trade by a mark. 



teademaek; law of franoe. 3G9 

In case of the deposit for registration of a plurality of marks belong- 
ing to the same individual, but one statement need be made, but there 
must be filed as man}- representations in triplicate and as many typo- 
graphical blocks as there are distinct marks. 

One of the specimens filed will be returned to the applicant bearing 
the indorsement of the clerk, together with an indication of the day 
and hour of its filing. 

The dimensions of the typographical blocks must not exceed 12 cen- 
timeters each way. 

The typographical blocks will be returned to the interested parties 
after the official publication of the marks by the Department of Com- 
merce, Manufacture, and Colonies.^ 



DECREE CONTAINING REGULATIONS OF THE ADMINISTRATION OF PUBLIC 
AFFAIRS FOR THE EXECUTION OF THE LAW OF JUNE 23, 1857, MODIFIED 
BY THAT OF MAY 3, 1890, RESPECTING MARKS OF MANUFACTURE AND 
COMMERCE. 

(February 28, 1891.) 

Art. 1. The deposit for registration which manufacturers, traders, 
or agriculturists may make of their marks with the clerk of the tribu- 
nal of their domicile, or, if there is no tribunal of commerce there, 
with the clerk of the civil tribunal, in order to secure the rights 
resulting from the law of June 23, 1857, is subject to the following 
provisions: 

Art. 2. The deposit for registration may be effected by the inter- 
ested party, or by his attorney under a special power of attorney. 

The power of attorney may be under private seal, but it must be 
entered on the register; it must be left with the clerk. 

Art. 3. The applicant must furnish in triplicate, on unstamped 
paper, a representation of the mark which it is desired to register. 

This representation consists of a drawing, engraving, or print exe- 
cuted in such manner as to show the mark with clearness and without 
change. 

The paper on which the representation is drawn or pasted must be 
in the form of a square 18 centimenters each way; the mark must 
be so placed in the center as to leave the spaces necessary to write in 
the statements hereinafter referred to. 

Art. 4. If the mark consists in a single symbol, or a combination of 
symbols used together, the representation of which is of a size too 
large to place on a sheet of paper of 18 centimeters each way, the rep- 
resentation may be either reduced to the necessary scale or divided 
into several parts which may be traced or pasted on several sheets of 
paper of 18 centimeters each way. 

If the mark is of small dimensions, the representations may show it 
enlarged. 

^The law of May 3, 1890, was followed on February 28, 1891, by a decree setting 
forth the rules of the administration of public affairs for its execution. This decree 
sets forth all the details material to the deposit for registration as required by the law 
of May 3, 1890, modifying in this respect the organic law of June 23, 1857. This 
decree explains itself. The official publication of marks, to which the last paragraph 
of the law refers, is made in the Bulletin Officiel de la Propriele Industrielle, which 
was established in 1884, in compliance with a requirement of the Convention of the 
Union of March 20, 1883. 



370 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Art. 5. If the mark is sunken into or in relief on the goods, if it 
needs to be reduced in size so as not to exceed the prescribed dimen- 
sions, if it has been enlarged, or if it presents any other peculiarity in 
respect to its representation, or the manner in which it is used on the 
goods for which it is intended, the person who deposits it for regis- 
tration must indicate such peculiarity on the three specimens, either 
by using one or more figures or by means of an explanatory statement. 

Such indications are placed on the left of the paper on which the 
mark is drawn or pasted. The right is reserved for the statements 
required by articles 10 and 11. 

The specimens filed should not contain any other indication. 

Art. 6. The clerk will ascertain whether the three specimens con- 
form to the provisions above set forth. 

If the three specimens are not upon paper of the proper dimensions 
or contain indications forbidden by article 5, the clerk will return 
them to the applicant to be corrected or to be replaced, and will not 
prepare the statement of deposit for registration required on the 
deposit of three specimens in regular form. 

The clerk will proceed in the same way: 

If the three specimens are not alike. 

If the representation of the mark is not firml}^ secured to the paper 
to which it is applied. 

If the representation is drawn in pencil. 

If the representation is in metal, in wax, or is in relief of such a 
nature as to damage the register on which the specimens are pasted. 

If the typographical block (cliche) is not deposited with the three 
specimens of the mark. 

Art. 7. The typographical block (cliche) which, the applicant fur- 
nishes with the three specimens of the mark must not exceed 12 centi- 
meters each way; it must be in metal and must conform to typographical 
blocks usually employed in printing from type. 

If the mark consists of a band of a length greater than 12 centime- 
ters or in a combination of symbols, the band may be divided into sev- 
eral parts, which shall be reproduced on the same typographical block, 
one under the other, or there may be furnished a single block showing 
the combination on a reduced scale. 

The person depositing the mark for registration shall place on the 
side of the block his name and address. 

Art. 8. The clerk must apply on the three specimens of the repre- 
sentation of the mark the stamp of the tribunial. When the represen- 
tation of the mark is not drawn on the paper, but is only pasted thereon, 
the clerk must so apply the stamp that it shall be partl}^ on the repre- 
sentation of the mark and partly on the paper. 

Art. 9. The clerk will paste one of the three specimens on a leaf of 
the register which he keeps for this purpose; the representations of the 
marks are placed on the register one after the other in the order of 
their presentation. The register is furnished by the clerk; it must be 
of unstamped paper, 24 centimeters wide by 10 centimeters high. The 
register is numbered and initialed by the president of the tribunal of 
commerce or the civil tribunal, as the case may be. 

Art. 10. The clerk then draws up on a stamped register, numbered 
and initialed as the register above mentioned, the statement of the 
deposit for registration in the order of presentation. It shows, first, the 



TRADEMARK LAW OF FBANCE. 371 

ds,j and the hour of the deposit for registration; second, the name of 
the proprietor of the mark, and, if the case requires, the name of his 
representative; third, the business of the proprietor, his domicile, and 
the kind of industr}^ or commerce in which he intends to use the mark. 
The clerk also gives to each statement a number. He places the num- 
ber on each of the three specimens as well as the name, the domicile, 
and the business of the proprietor of the mark and if the case requires 
it of his representative, the date, the hour, and the place of deposit 
and the kind of industry or commerce for which the mark is intended. 
The statement and the representations of the mark are signed by the 
clerk and the person depositing them or his representative. 

Art. 11. When the deposit is made for the purpose of preserving 
the right, for a new period of fifteen 3^ears, to a mark already regis- 
tered, this circumstance should be noted on the statement of the deposit 
for registration, as well as on the three specimens of the representation 
of the mark. 

Art. 12. The clerk must be paid, besides the fee fixed at 1 franc 
for the statement of the deposit for registration, including the cost of 
forwarding, the cost of the stamp and the registration. 

The same manufacturer or merchant ma}^ effect the deposit for reg- 
istration of a number of marks by a single statement, but the clerk 
must be paid as many times the fee fixed at 1 franc as there are marks 
deposited. 

Art. 13. In case a copy of the statement is asked for afterwards by 
an}^ one it should be given on payment of a fee of 1 franc and the 
cost of the stamp. 

Art. 14:. One of the three specimens, together with the t^^pograph- 
ical block of each mark, should be forwarded within five days from the 
date of the statement to the INlinistr}^ of Commerce. 

The specimens forwarded to the Ministry of Commerce remain there 
to be communicated to the public without expense. 

Art. 15. Foreigners and French citizens, whose establishments are 
located out of France and who can register their trademarks in France 
under either article 6 of the law of June 23, 1857, or article 9 of the 
law of November 26, 1873, concerning the establishment of a special 
stamp or sign to be placed on trademarks, are permitted to deposit 
their marks for registration only with the office of the clerk of the 
tribunal of commerce of the department of the Seine. 

Art. 16. When a registrant intends to abandon the use of his trade- 
mark, he should make a declaration of such intention in the clerk's 
office of the tribunal where the mark was deposited. The clerk will 
enter this declaration on the margin of the statement of deposit for 
registration and will give notice thereof at once to the Minister of 
Commerce who will publish it in the bulletin Officiel de la Propriete 
Industrielle et Commerciale. 

Art. 17. At the beginning of each 3xar the clerk will prepare, on 
unstamped paper and in the form prescribed b}^ the Minister of Com- 
merce, a report of the marks deposited with him during the preceding 
year. 

The clerk is authorized to furnish to the person depositing the mark 
certificates of identity of his mark on payment of the fee of 1 franc 
fixed by article 8 of the decree of June 18, 1880. 



372 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Art. 18. The registers, statements, and reports deposited in the 
clerk's offices are communicated without charge. 

Art. 19. Trademarks deposited for registration are published, after 
they are received at the Ministry of Commerce, in the Bulletin Officiel 
de la Propriete Industrielle et Coimmerciale. 

Art. 20. The decree of July 26, 1858, is, and remains, repealed. 

Art. 21. The Minister of Commerce, of Industries, and of the Col- 
onies is charged with the execution of the present decree, which shall 
be inserted in the Bulletin des Lois and published in the Journal Offl- 
ciel of the French Eepublic. 



Chapter XXIV. 

LAWS OF CERTAIN FOREIGN COUNTRIES WHICH REQUIRE REG- 
ISTRATION AS A CONDITION PRECEDENT TO SECURING FULL 
PROTECTION FOR TRADEMARKS. 



Section 1. 

ARGENTINE REPUBLIC. 

(Law of August 14, 1876.) 

Art. 12. Any one who desires to secure the ownership of manufac- 
turing or commercial trademarks must make application therefor at 
the patent office. 



Section 2. 

AUSTRIA. 

(Law of January 6, 1890.) 

Art. 2. Any person wishing to secure the exc usive right to use a 
mark must obtain the registration of the same conformably with the 
regulations of the following section. 

The same provision is found in the law of February 4, 1890, of 
Hungary. (Art. 2.) 

Section 3. 

BELGIUM. 

(Law of April 1, 1879.) 

Art. 2. No one shall lay claim to any right to use of a mark if he 
has not filed a specimen in triplicate, and a typographic block of the 
mark with the clerk of the tribunal of commerce in the district in 
which his establishment is located. 



Section 4. 



brazil. 

(Law of October 14, 1887.) 

Art. 3. In order to secure the exclusive use of said marks, their reg- 
istry, deposit, and publication according to this law are indispensable. 



373 



374 BE VISION OF STATUTES RELATING TO PATENTS, ETC 

Section 5. 

BULGARIA. 

(Law of December 15-27, 1892. ) 

Art. 6. Whoever shall desire to reserve to himself the exclusive 
use of a mark must make a formal application in conformity with the 
following rules * * * . 



Section 6. 

CANADA. 

(Trademark and Design Act, 42 V., c 22; Revised Statutes, 1886.) 

19. No person shall institute any proceeding to prevent the infringe- 
ment of any trademark, unless such trademark is registered in pur- 
suance of this act. 



Section 7. 

CHILI. 

(Law of November 12, 1874.) 

Art. 5. Whoever secures the registration of a mark of manufacture 
or of commerce secures an exclusive property therein. 



Section 8. 

CONGO FREE STATE. 

(Law of April 26, 1888. 

Art. 2. No one shall lay claim to the exclusive use of a mark if he 
has not filed specimens in triplicate, together with a typographical 
block of his mark in the department of foreign affairs. 



Section 9. 

DENMARK. 

(Law of April 11, 1890.) 

Art. 1. Any person who carries on within the Kingdom manufac- 
tures, agriculture, mining, commerce, or industry, in addition to the 
right which he already has of using as a trademark his personal or 
commercial name or the name of any real property belonging to him, 
may acquire, by registration, in accordance with the formalities pre- 
scribed by the present law, an exclusive right to make use of a special 
mark in order to distinguish on the market his goods from those of 
others. 

The same provision is found in the law of May 26, 1884, of Norway 
(art. 1), and the law of July 5, 1SS4, of Sweden. (Art. 1.) 



'registration of trademarks required. 375 

Section 10. 

FINLAND. 

(Law of February 11, 1889.) 

Sec. 1. Whoever manufactures or sells products in Finland has the 
right to acquire, by registration conformably to the following require- 
ments, the exclusive right to make use of a special mark for the pur- 
pose of distinguishing, in general commerce, his products from those 
of others. 



Section 11. 

FRANCE. 

(Law of June 23, 1857.) 

Art. 2. No one may claim exclusive property in a mark if he has 
not deposited for registration two specimens of the mark with the clerk 
of the tribunal of commerce of his domicile. 



Section 12. 

GERMANY. 

(Lawof May 12,1894.) 

Sec. 12. The effect of registration of a mark shall be to confer on 
the registrant the exclusive right to affix the mark to merchandise of 
the kind named in the declaration, or to its wrappers or envelopes; to 
put on the market goods so marked, and to employ the mark in adver- 
tisements, price lists, business letters, press notices, invoices, and the 
like. 



Section 13. 

GREAT BRITAIN. 

(Patent, Designs, and Trademarks Act, 1883, as amended December 24, 1888.) 

75. Application for registration of a trademark shall be deemed to 
be equivalent to public use of the trademark, and the date of the appli- 
cation shall for the purposes of this act be deemed to be, and as from 
the first day of January, one thousand eight hundred and seventy-six, 
to havft been the date of the registration. 

76. The registration of a person as proprietor of a trademark shall 
be prima facie evidence of his right to the exclusive use of the trade- 
mark, and shall after the expiration of five years from the date of the 
registration, be conclusive evidence of his right to the exclusive use 
of the trademark, subject to the provisions of this act. 

77. A person shall not be entitled to institute any proceeding to pre- 
vent or to recover damages for the infringement of a trademark unless, 
in the case of a trademark capable of being registered under this act, 

S. Doc. 20 25* 



876 REVisioisr of statutes eelathstg to patents, etc. 

it has been registered in pursuance of this act, or of an act repealed by 
this act, or in the case of any other trademark in use before the thir- 
teenth of August, one thousand eight hundred and seventy -five, regis- 
tration thereof under this act or of an enactment repealed by this act, 
has been refused. The comptroller ma}^ on request, and on payment 
of the prescribed fee, grant a certificate "that such registration has been 
refused. 

Substantially the same provisions are found in the law of May 22, 
1888, of Jamaica (sees. 17-19); the law of September 2, 1889, of New 
Zealand (sees. 82-81); the law of October 13, 1881, of Queensland (sees. 
71-76); the law of December 17, 1892, of South Australia (sees. 19-21); 
the law of September 29, 1893, of Tasmania (sees. 83-85); the law of 
December 19, 1890, of Victoria (sees. 19-21), and the law of August 
27, 1884, of Western Australia (sees. 31-33). 



Section 11. 

GREECE. 

(Law of January 16, 1893. ) 

Art. II. * * * No one shall have the legal right to protection in 
the exclusive use of a mark unless he shall have deposited three copies 
of it and one t3^pographical cut at the office of the civil tribunal of 
first instance of the district where he has his principal establishment, 
or in default of that, an establishment and his domicile. 



Section 15. 

ITALY. 

(Law of August 30, 1868.) 

Art. 1. Whoever adopts a mark or other sign to distinguish the 
products of his industr}^, the goods in which he trades or animals of 
a breed belonging to him, shall have the exclusive use thereof, pro- 
vided he files it as prescribed b}^ the present law. 



Section 16. 

JAPAN. 

(Law of March 1, 1899. ) 

Art. 1. Any person desiring to have the exclusive use of the trade- 
mark designating his goods shall obtain registration therefor under 
this act. 



REGISTRATION OF TRADEMARKS REQUIRED. 377 

Section 17. 

LTJXEMBUKG. 

(Law of March 28, 1883.) 

Art. 2. No one can lay claim to the exclusive use of a mark if he 
has not deposited a specimen in duplicate and a typographical block 
in the hands of the officer designated by the Government. 



Section 18. 

MEXICO. 

(Law of November 28, 1889.) 

Art. V. In order to acquire the exclusive property in a trademark 
the party in interest must apply by himself or his representative to 
the Department of Public Works, stating that he reserves to himself 
all rights, accompanying the application with the following docu- 
ments: etc. 



Section 19. 

NEW SOUTH WALES. 
(Law of May 26, 1865.) 
2. Marks in order to have any legal effect must be registered. 



Section 20. 

ORANGE FREE STATE. 

(Law of June 9, 1891.) 

Art. 1. The comptroller of public documents shall keep in the reg- 
istration office a register of manufacturers' marks and their proprietors, 
conformably to the provisions of the present act; from and after the 
date at which it takes effect no one shall be authorized to prosecute 
judicially the infringement of a manufacturer's mark, such as is pro- 
vided for by the present act, or to demand damages for such infringe- 
ment, unless such mark has been registered conformably to the 
provisions of this act. 



Section 21. 
portugal. 

(Law of May 21, 1896.) 



Art. 6. In order that a mark may be considered an exclusive prop- 
erty it is essential that it shall have been registered. 



378 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Section 22. 

KOUMANIA. 

(Law of April 15-27, 1879.) 

Art. 7. Persons desiring to claim the exclusive property in a trade- 
mark are required to deposit two copies of the form of said trademark 
with the Register of the Tribunal of Commerce in their domicile. 



Section 23. 

RUSSIA. 

(Law of February 26-March 9,' 1896.) 

Art. 4. The manufacturer or merchant who desires to secure the 
right to the exclusive use of a merchandise mark (art. 1) must file it 
in the Department of Commerce and Manufactures, and receive a cer- 
tificate (art. 10) on paying the prescribed fee. 



Section 24. 

SERBIA. 



(Law of May 30-June 11, 1884.) 

Art. 2. Anyone who wishes to secure the right to the exclusive use 
of a mark must register it in conformity with provisions of Title II of 
this law. 



Section 25. 

SWITZERLAND. 



(Law of September 26, 1890.) 

Art. 4. The right to the use of a mark can not be claimed before 
the courts except after the fulfillment of the formalities of filing and 
registration prescribed by articles 12 to 15 hereinafter. 



Section 26. 

TURKEY. 



(Law of May 10, 1888.) 

Art. 3. Before having the right to bring an action for counterfeiting 
a mark, the lawful owner of it must file two specimens of it in accord- 
ance with the requirements of chapter 2 hereinafter, with the ministry 



EEGISTEATION OF TRADEMARKS REQUIRED. 379 

of commerce or the ministry of justice at Constantinople and with the 
counsel bureau of the government or with the clerk of the court of 
appeal in the provinces. 

Note. — The above extracts are taken from the trademark laws of 
Argentine Republic, Austria, Brazil, Bulgaria, Germany, Great Britain, 
Greece, Mexico, Koumania, and Serbia, as published in the Official 
Gazette of the United States Patent Office; from an official copy of 
the trademark law of Canada; from the trademark law of Portugal, as 
published in a supplement to Carpmael's Patent Laws of the World; 
from the French translation of the trademark laws of Belgium, Chile, 
Congo Free State, Denmark, Finland, Italy, Luxemburg, New South 
Wales, Orange Free State, Russia, Switzerland, and Turkey, as pub- 
lished by the International Bureau of Industrial Property at Berne in 
Recueil General de la legislation^ etc. (translations), and from a trans- 
lation of the Trademark Law of Japan. 



Chapter XXV. 

LEGISLATION AND PROPOSED LEGISLATION IN THE UNITED 
STATES CONCERNING TRADEMARKS, AS SHOWN BY THE CON- 
GRESSIONAL GLOBE AND CONGRESSIONAL RECORD FROM THE 
THIRTY-SIXTH CONGRESS TO THE FIFTY-FIFTH CONGRESS. 



THIRTY-SIXTH CONGRESS. 

A single trademark bill was introduced in the House in this Con- 
gress. It is the first trademark bill of which we find an}^ mention in 
the Congressional Globe, 

H. R. 330. — A bill to prevent and punish fraud in the use of false stamps, brands, labels, 
or trademarks. Introduced by Hon. James K. Moorhead, of Pennsyl- 
vania, March 13, 1860. Referred to Committee on Commerce. Reported 
favorably. Referred to the Committee of the Whole on the state of 
the Union. Not reported. 

[House of Representatives, first session, March 13, 1860, Cong. Globe, vol. 51, p. 1131.] 
FALSE TRADEMARKS, ETC. 

Mr. Moorhead. I ask the unanimous consent of the House to intro- 
duce a bill to prevent and punish fraud in the use of false stamps, 
brands, labels, or trademarks; of which notice was given yesterday. 

Mr. Grow. I object and call for the regular order of business, which 
is the call of committee for reports. 



[House of Representatives, first session, March 14, 1860, Cong. Globe, vol. 51, p. 1147.] 



Mr. Moorhead, by unanimous consent and in pursuance of previous 
notice, introduced a bill to prevent and punish fraud in the use of 
false stamps, brands, labels, or trademarks; which was read a first and 
second time and referred to the Committee on Commerce. 



[House of Representatives, first session. May 18, 1860, Cong. Globe, vol. 52, p. 2186.] 
FALSE STAMPS, ETC. 

Mr. Moorhead, from the same committee [Commerce] reported 
back, with a recommendation that it do pass, a bill (H. R. 330) to 
yjrevent and punish frauds in the use of false stamps, brands, labels, 
and trademarks; which was referred to the Committee of the Whole 
on the state of the Union, and ordered to be printed. 
380 



THIRTY-SIXTH OONGEESS. 381 

[House of Representatives, second session, January 25, 1861, Cong. Globe, vol. 54, p. 561.] 
FRAUDS ON TRADEMARKS. 

Mr. MooRHEAD. I ask the unanimous consent of the House that 
the Committee of the Whole on the state of the Union be discharged 
from the further consideration of House bill No. 330, and that it be 
put upon its passage. It is a bill to punish frauds on trademarks. 

Mr. Phelps. That is not a private bill. It is a public one. 

Mr. Branch. I would ask the gentleman from Penns3dvania if he 
has been instructed b}^ the Committee on Commerce to make that 
motion. 

Mr. MooRHEAD. No, sir. 

Mr. Branch. Then it is not in order on the call of committees for 
reports, and I object to it. 

[House of Representatives, second session, January 31, 1861, Cong. Globe, vol 54, p. 670.] 
FALSE STAMPS, ETC. 

Mr. MooRHEAD. I ask the unanimous consent of the House to have 
House bill No. 330 taken up and acted on. It is a public bill in which 
the constituents of every gentleman are interested ; and I hope there 
will be no objection. 

The bill, being a bill to prevent and punish fraud in the use of false 
stamps, molds, dies, brands, labels, or trademarks, was read for 
information. 

Mr. NoELL. The General Government has nothing to do with the 
punishment of that crime ; and I shall object to taking up the bill. 

Mr. MooRHEAD. The gentleman's constituents have petitioned very 
largely for that bill. 

Mr. NoELL. I would have no objection to it if the General Govern- 
ment had any power over the subject. 

Mr. MooRHEAD. It is necessary for the security of commerce. 

Mr. McKnight. I appeal to the gentleman to withdraw his objec- 
tion. 

Mr. NoELL. I insist upon my objection. 



[House of Representatives, second session, February 7, 1861, Cong. Globe, vol. 54, p. 798.] 
FALSE STAMPS, ETC. 

Mr. MooRHEAD. I ask the unanimous consent of the House that the 
Committee of the Whole on the state of the Union be discharged from 
the further consideration of House bill No. 330 to prevent and punish 
frauds in the use of false stamps, brands, labels, or trademarks, in 
order that it may be put on its passage. 

Mr. Burnett. Congress has no power to legislate for the States on 
that subject. I object. 

Mr. MooRHEAD. Other gentlemen who thought so have, after 
examination, withdrawn their opposition. 

Mr. Burnett. I can not withdraw my objection until the form of 
our Government is changed. 



382 REVISION OF STATUTES RELATING TO PATENTS, ETC. 



'1 
THIRTY- SEVENTH CONGRESS. 



1 



H. R.— A bill to prevent and punish fraud in the use of false stamps, molds, dies, 
brands, labels, and trademarks. Introduced by Hon. James K. Moor- 
head, of Pennsylvania, January 20, 1862. Referred to the Committee 
on the Judiciary. Not reported. 

[House of Representatives, second session, January 20, 1862, Cong. Globe, vol. 57, p. 399.] 
FRAUDS IN TRADEMARKS, ETC. 

Mr. Moorhead introduced a bill to prevent and punish fraud in the 
use of false stamps, molds, dies, brands, labels, or trademarks; which was 
read a first and second time, and referred to the Committee on the 
Judiciary. 

THIRTY-NINTH CONGRESS. 

H. K. — A bill to prevent and punish fraud in the use of false stamps, brands, labels, 
and trademarks. Introduced by Hon. James K. Moorhead, of Penn- 
sylvania, January 19,1867. Eeferred to the Committee on Patents. 
Not reported. 

[House of Representatives, second session, January 19, 1867, Cong. Globe, vol. 74, p. 593.] 
TRADEMARKS. 

Mr. Moorhead, by unanimous consent, introduced a bill relating to 
trademarks ; which was read a first and second time, and referred to 
the Committee on Patents. 



FORTY-FIRST CONGRESS. 

Four trademark bills were introduced in the Senate and two in the 
House of Representatives in this Congress. 

S. 264. — A bill to execute the provisions of a certain treaty between the United States 
and His Majesty the Emperor of all the Russias. Introduced by 
Hon. Lyman Trumbull, of Illinois, of the Committee on the Judiciary, 
April 7, 1869. Indefinitely postponed. 

[Senate, first session, April 7, 1869, Cong. Globe, vol. 87, p. 573.] 

Mr. Trumbull, from the Committee on Judiciary, reported a bill (S. 
264) to execute the provisions of a certain treat}^ between the United 
States and His Majesty the Emperor of all the Kussias, concluded on 
the 27th day of January, A. D. 1868; which was read and passed to 
a second reading. 

S. 265. — A bill to prevent the counterfeiting of foreign trademarks protected by 
treaty stipulations. Introduced by Hon. Charles Sumner, of Massa- 
chusetts, of the Committee on Foreign Kelations, April 7, 1869. 
Passed by the Senate. Eeferred to the House Committee on Com- 
merce. Not reported. 

[Senate, first session, April 7, 1869, Cong. Globe, vol. 87, p. 573.] 

Mr. Sumner, from the Committee on Foreign Eelations, reported a 
bill (S. 265) to prevent the counterfeiting of foreign trademarks pro- 
tected by treaty stipulations; which was read, and passed to a second 
reading. 



FORTY-FIEST CONGRESS. 383 

[Senate, second session, April 22, 1870, Cong. Globe, vol. 91, p. 2894.] 
FOREIGN TRADEMARKS. 

The next bill on the Calendar was stated to be the bill (S. 264) to 
execute the provisions of a certain treaty between the United States 
and His Majesty the Emperor of all the Russias, concluded on January 
27, A. D. 1868. 

Mr. Trumbull. Let the bill be read. I do not remember it. 

The Secretary read the bill. 

Mr. Trumbull. By some mistake or misapprehension it seems that 
subject has been before the Committee on Foreign Relations and the 
Committee on the Judiciary both, and both committees have reported 
bills. The next bill, No. 265, is reported by the Committee on For- 
eign Relations on the same subject, and the Senator from Massachu- 
setts thinks that is a better bill. I ask that that be read. We had better 
pass one of them. 

The Presiding Officer. This bill will be regarded as objected to. 

Mr. Trumbull. No; let the next bill be read. These two bills are 
on the same subject. 

The Secretary read the bill (S. 265) to prevent the counterfeiting of 
foreign trademarks protected by treaty stipulations. It has a pream- 
ble reciting that treaties have been concluded between the United 
States and certain foreign powers, by which the contracting parties 
have mutually bound themselves to prevent their citizens or subjects 
from counterfeiting trademarks used by citizens or subjects of the 
other, and that other similar treaties are proposed. In order to carry 
into effect the stipulations which have been or may hereafter be made 
by the Government of the United States, it is proposed to enact that 
whenever any citizen or subject of a foreign power uses any trade- 
mark on merchandise to show its origin and quality, and has taken the 
steps prescribed by treaty to secure the right of property in such 
trademark, no person anywhere within the United States shall counter- 
feit the same. Whoever violates this provision, or knowingly sells or 
exposes for sale any article having such counterfeited trademark, is 
to be liable to the injured party in an action at law or equity, to be 
prosecuted in any court of the United States having jurisdiction 
thereof. 

Mr. Trumbull. I am satisfied with the bill No. 265. It is a general 
bill and covers all treaties of this kind, whereas bill No. 264 is confined 
to the treaty with Russia. If this bill reported by the Committee 
on Foreign Relations will answer the purpose by giving an action of 
damages, I shall prefer it. I move, therefore, to postpone indefinitely 
Senate bill No. 264, with a view of passing bill No. 265. 

Mr. Carpenter. I wish to call the attention of the chairman of the 
Committee on the Judiciary and also the chairman of the Committee 
on Foreign Relations to the fact that the bill reported by the Commit- 
tee on Foreign Relations seems to me to add nothing to the existing 
law. It simply says that whoever shall violate a trademark shall be 
liable to an action of damages. He is so without any statute. If any 
action whatever is needed on the part of Congress, it is to make the 
law more stringent than is the common law. If any man should use a 
trademark fraudulently that is a misdemeanor; that is obtaining 
money under false pretenses. It is not like the case of an infringe- 
ment of a patent, which a man may do without knowledge that a 



384 REVISIOISI OF STATUTES RELATING TO PATENTS, ETC. 

patent exists; but if a man violates the trademark of another man and 
puts it on goods to sell for the purpose of defrauding, that is a misde- 
meanor and should be so punished. The bill reported by the Com- 
mittee on the eludiciary adds to the existing law, and I think the other 
bill does not. 

Mr. Williams. I will inquire of the Senator if he is altogether cer- 
tain whether a citizen of a foreign country can maintain his action at 
common law for damages for counterfeiting a foreign trademark in the 
United States? 

Mr. Carpenter. Counterfeiting a trademark of the United States ? 
No. 

Mr. Williams. A foreign trademark in the United States ? 

Mr. Carpenter. Yes, undoubtedly. 

Mr. Sumner. Could he maintain it in the courts of the United States ? 

Mr. Fowler. 1 object to this bill. 

The Presiding Officer. The Senator from Tennessee objects to the 
further consideration of the bill, and it therefore lies oyer under the 
objection. 

Mr. Sumner. We had better pass one of these bills. 

The Vice-President. The Senator from Tennessee objected to both 
bills. 

Mr. Fowler. I do not object if they can be passed without debate. 

Mr. Trumbull. There will be no considerable debate. This is merely 
an explanation. 

Mr. Fowler. I withdraw the objection. 

Mr. Trumbull. Some bill on this subject ought certainly to pass. 

Mr. Sumner. There are already three treaties, 1 will sslj^ on this 
subject. We have ratified one with Russia, one with Belgium, and 
another with France; and the object of this statute is simply to carry 
into execution those treaties by providing remedies for the parties 
under them. The bill reported from the Committee on Foreign Rela- 
tions simply gave the right -of action on the idea that some statute 
power of that kind was needed to give the parties a remedy in the 
courts of the United States. 

Mr. Carpenter. Let me call the attention of the chairman of the 
committee to this fact: There are two classes of cases which may be 
brought in the Federal courts. One is brought there because it 
involves some right granted by Congress, and another is brought there 
on the citizenship or alienage of the part3^ A suit brought by the 
subject of any foreign nation is always capable of being brought in 
the Federal courts. At the common law, of course, every man can 
maintain his action for a violation of his trademark. He may go into 
chancery and enjoin the party upon it. That has been settled law for 
a great many years. If he be the subject of a foreign power, he 
comes, in virtue of that fact, into the Federal courts and there enforces 
all his common-law rights. 

Mr. SuiMNER. But will the national court — I choose to call it national 
rather than Federal, with the Senator's permission 

Mr. Carpenter. You have my permission. [Laughter.] 

Mr. Sumner. Thank you for that. [Laughter.] Will the national 
courts recognize the common law? 

Mr. Trumbull. Oh, yes. 

Mr. Carpenter, They can not help themselves. 

Mr. Sumner. The Senator from Illinois says. "Oh, yes." That is 



FORTY-FIBST CONGEESS. 385 

a question which has been discussed greatly from the beginning of our 
Government. Now, a simple statute conferring this power on the 
courts supersedes that question. 

Mr. Edmunds. I wish to say a word 

Mr. Ferry. It can not do any harm. Let us pass it. 

Mr. Edmunds. My friend from Massachusetts is mistaken in sup- 
posing that there has ever been any difficulty in the national courts, 
as he properly characterizes them, about the power of the courts to 
enforce common-law rights, which are rights of property everywhere. 
The difficulty has been in punishing misdemeanors, because there 
could be no common-law misdemeanor against the United States, as 
the courts have held. Therefore I assure my friend that there is not 
the slightest difficulty in the United States courts in enforcing all 
common -law rights of property. 

Mr. Carpenter. They do it every day in repeated suits. 

The bill (S. 265) was considered as in Committee of the Whole, and 
reported to the Senate without amendment. 

Mr. Trumbull. Let me inquire of the Senator from Massachusetts 
whether he wants the preamble to the bill retained. 

Mr. Su^iNER. No; I do not. 

Mr. Trumbull. I move to strike it out. 

The motion was agreed to. 

The bill was ordered to be engrossed for a third reading, was read 
the third time, and passed. 

Mr. Edmunds. Have we disposed of the other bill of the same 
nature ? 

The Vice-President. Senate bill No. 264 will be regarded as indeii- 
nitely postponed if there be no objection. 

[House of Representatives, second session, April 23, 1870, Cong. Globe, vol. 91, p. 2931.] 

A message from the Senate, by Mr. Gorham, its Secretary, * * * 
announced that the Senate had passed * * * bills of the following 
titles, in which the concurrence of the House was requested: 

* * * -x- * * * 

An act (S. 265) to prevent the counterfeiting of foreign trademarks 
protected by treaty stipulations. 

[House of Representatives, second session, June 29, 1870, Cong. Globe, vol. 93, p. 4953.] 
FOREIGN TRADEMARKS. 

The next business on the Speaker's table was a bill (S. 265) to pre- 
vent the counterfeiting of foreign trademarks protected by treaty 
stipulations. 

Mr. Paine. I object. 

The bill was passed over. 

[House of Representatives, second session, July 14, 1870, Cong. Globe, vol. 93, p. 5594.] 
COUNTERFEITING FOREIGN TRADEMARKS. 

The next business on the Speaker's table was a bill (S. 265) to pre- 
vent the counterfeiting of foreign trademarks protected by treaty 
stipulations. 

Mr. Allison. I object. 



386 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Mr. Jenckes. Let it be referred to the Committee on Patents. 
Mr. Van Auken. I object. 

Mr. Maynakd. I ask that it be referred to the Committee on Ways 
and Means. 
Mr. Van Auken. I object. 



[House of Representatives, third session, December 13, 1870, Cong. Globe, vol. 95, p. 89.] 
COUNTERFEITING OF FOREIGN TRADEMARKS. 

The next business on the Speaker's table was the bill (S. 265) to pre- 
vent the counterfeiting of foreign trademarks protected by treaty 
stipulations; which was read a first and second time, and on motion of 
Mr. Kelsey referred to the Committee on Commerce. 

S. 501. — A bill more effectually to provide for the execution of treaties for the pro- 
tection of the owners of trademarks. Introduced by Hon. Lyman 
Trumbull, of Illinois, February 7, 1870. Eeferred to the Committee 
on the Judiciary. Indefinitely postponed. 

[Senate, second session, February 7, 1870, Cong. Globe, vol. 89, p. 1076.] 

Mr. Trumbull asked and b}^ unanimous consent obtained, leave to 
introduce a bill (S. 501) more effectually to provide for the execution 
of treaties for the protection of the owners of trademarks; which was 
read twice b}^ its title, referred to the Committee on the Judiciary, 
and ordered to be printed. 



[Senate, second session, April 18, 1870, Cong. Globe, vol. 90, p. 2738.] 

Mr. Trumbull, from the same committee [Committee on the Judiciary], 
to whom was referred the bill (S. 501) more effectually to provide for 
the execution of treaties for the protection of the owners of trade- 
marks, moved its indefinite postponement, there being a bill on the 
Calendar reported from the Committee on Foreign Relations upon the 
same subject. 

The bill was indefinitely postponed. 

H. R. 1824. — A bill to prevent the importation from foreign countries of articles 
fabricated in imitation of and bearing the trademarks of articles of 
American manufacture. Introduced by Hon. Nathaniel P. Banks, of 
Massachusetts, April 19, 1870. Referred to the Committee on Ways 
and Means. Not reported. 
[House of Representatives, second session, April 19, 1870, Cong. Globe, vol. 90, p. 2779.] 

FOREIGN IMITATIONS OF TRADEMARKS. 

Mr. Banks, by unanimous consent, introduced a bill (H. R. 1824) to 
prevent the importation from foreign countries of articles fabricated 
in imitation of and bearing the trademarks of articles of American 
manufacture; which was read a first and second time, referred to the 
Committee on Ways and Means, and ordered to be printed. 

S. 829. — A bill in relation to fraudulent trademarks upon foreign watches. Intro- 
duced by Hon. Justin S. Morrill of Vermont, April 21, 1870. Passed 
in Senate and House. Approved by President March 3, 1871. (16 
U. S. Stat. L., p. 580, ch. 125.) 
[Senate, second session, April 21, 1870, Cong. Globe, vol. 91, p. 2862.] 

Mr. Morrill, of Vermont, asked and by unanimous consent obtained, 
leave to introduce a bill (S. 829) in relation to fraudulent trademarks 
upon foreign watches; which was read twice by its title, referred to 
the Committee on Finance, and ordered to be printed. 



FORTY-FIRST CONGRESS. 387 

[Senate, second session, April 28, 1870, Cong. Globe, vol, 91, p. 3051.] 

Mr. Morrill, of Vermont, from the Committee on Finance, to whom 
was referred a bill (S. 829) in relation to fraudulent trademarks upon 
foreign watches, reported it without amendment. 



[Senate, second session, May 3, 1870, Cong. Globe, vol. 91, p. 3176.] 
TRADEMARKS ON FOREIGN WATCHES. 

The next bill on the calendar was the bill (S. 829) in relation to 
fraudulent trademarks upon foreign watches; which was considered 
as in Committee of the Whole. The bill provides that from and after 
the 1st of August next no foreign watches of gold, silver, or other 
metal, or watch movements, shall be admitted to entry at the custom- 
houses in the United States unless there shall be legibly and distinctly 
engraved or stamped upon the works or movements the maker's name 
or distinguishing trademark, and in connection therewith and as a part 
thereof the name of the place and country where manufactured; but 
existing trademarks of foreign manufacturers of watches need not be 
changed if they distinctly show that the watch movements are of for- 
eign production. If any watches or watch movements of foreign 
manufacture shall be offered for entry at any custom-house in the 
United States which shall copy or simulate the name or trademark of 
any domestic manufacturer they are to be forfeited to the United 
States. 

The Committee on Finance reported the bill with amendments. The 
first amendment was in section one, line four, after the word '* watches" 
to strike out the words "of gold, silver, or other metal." 

The amendment was agreed to. 

The next amendment was in section one, line seven, after the words 
''stamped upon the," to insert the words ''exposed surfaces of the 
plates or bridges of the." 

The amendment was agreed to. 

Mr. Morrill, of Vermont. In section two, line two, after the words 
"watch movements," I move to add the words "or parts of watch 
movements." 

The amendment was agreed to. 

The bill was reported to the Senate as amended, and the amendments 
were concurred in. The bill was ordered to be engrossed for a third 
reading, was read the third time, and passed. 



[House of Representatives, second session, May 4, 1870, Cong. Globe, vol. 91, p. 3227.] 

A message from the Senate by Mr. Gorham, its secretaiy , announced 
that the Senate had passed bills of the following titles, in which the 
concurrence of the House was requested: 

An act (S. 829) in relation to fraudulent trademarks upon foreign 
watches. 



[House of Representatives, second session, June 24, 1870, Cong. Globe, vol. 93, p. 4803.] 
FRAUDULENT TRADEMARKS. 

On motion of Mr. Maynard, by unanimous consent, a bill (S. 829) in 
relation to fraudulent trademarks of foreign watches was taken from 
the Speaker's table, read a first and second time, and referred to the 
Committee of Ways and Means. 



388 EEVISION OF STATUTES RELATING TO PATENTS, ETC. 

[House of Representatives, third session, March 3, 1871, Cong. Globe, vol. 97, p. 1926.] 
FRAUDULENT TRADEMARKS. 

The Speaker. The Chair is informed that the chairman of the Com- 
mittee of Wa3^s and Means has some public business to report to the 
House; and if there be no objection, he will have leave to report. 

Mr. Brooks, of New York. I do not know of any business from the 
Committee of Wa^^s and Means which it is necessary for us to con- 
sider at this time of the night. I reserve objection until I hear what 
the business is. 

The Speaker. Of course the right to object is reserved until the 
business has been reported. 

Mr. Hooper, of Massachusetts. 1 am directed by the Committee of 
Ways and Means to report back Senate bill No. 829 in relation to 
fraudulent trademarks upon foreign watches, with a substitute. 

Mr. Randall. I hope that we shall have both the bill and substitute 
read, so that we may understand them. 

Mr. Peters. What becomes of my resolution ? 

Mr. Brooks, of Massachusetts. And the motion in reference to 
taking a recess? 

The Speaker. They are both in abeyance for the present. 

Mr. Dawes. 1 withdraw my motion to take a recess. 

The Clerk read the bill. The first section provides that from and 
after the first day of August next no foreign watches or watch move- 
ments shall be admitted to entry at "the custom-houses of the United 
States unless there shall be legibly and distinctl}^ engraved or stamped 
upon the exposed surfaces of the plates or bridges of the works or 
movements the maker's name or distinguished trademark,and in con- 
nection therewith as a part thereof the name of the place and country 
where manufactured, provided that existing trademarks of foreign 
manufacturers of watches need not be changed if they distinctly show 
that the watch movements are of foreign production. The second 
section provides that if any watches or watch movements of foreign 
manufacture shall be offered for entry at any custom-house in the 
United States, which shall copy or simulate the name or trademark of 
any domestic manufacturer, the same shall be forfeited to the United 
States. 

The Speaker. The gentleman from Massachusetts [Mr. Hooper] 
offers an amendment in the nature of a substitute, which will now be 
reported. 

The substitute was read. It provides that from and after the first 
day of January, 1871, no watches, watch cases, or watch movements, 
or part of watch movements of foreign manufacture, which shall copy 
or simulate the trademark of any domestic manufacturer, shall be 
admitted to entr}^ at the custom-houses of the United States, unless 
such domestic manufacturer is the importer of the same. In its sec- 
ond section it provides that domestic manufacturers of watches who 
have adopted trademarks ma}^ cause to be recorded in the Treasury 
of the United States, in a book to be kept for that purpose under 
such rules and regulations as may be prescribed by the Secretary of 
the Treasury, their names and residences and descriptions of trade- 
marks, and furnish to the Secretary facsimiles of such trademarks; 
audit shall be the duty of the Secretary to transmit one or more copies 
of the same to each collector or other proper officer of the customs of 



m 



FOETY-FIEST CONGEESS. 389 

the United States, to be used by such officers in the execution of the 
first section of this act. 

Mr. Hoar. I desire to ask if there is anything in the substitute 
which prevents the importation of foreign articles without any trade- 
mark or maker's name and putting on the f radulent trademark in this 
country. 

Mr. Farnsworth. You can not prevent that at the custom-house. 

Mr. Hoar. The bill as it is drawn prohibits the importation of any 
foreign watch unless there is upon it, legibly, the name or trademark 
of the manufacturer. That protects the American manufacturer per- 
fectly against fraud; the substitute does not. 

Mr. Fox. Mr. Speaker, I rise to a point of order. Is this debatable? 

The Speaker. It is not. 

Mr. Fox. Then I object to debate. 

Mr. Farnsworth. Will the gentleman from Massachusetts [Mr. 
Hooper] allow me to answer the interrogatory of his colleague [Mr, 
Hoar] ? 

Mr. Fox. I object to debate, and I ask that the bill be read. I 
believe that is my right. 

The Speaker. It is not the gentleman's right, the bill having already 
been read. Is there objection to its being read again? 

Several members objected. 

The question was on suspending the rules and passing the bill as 
amended by the amendment in the nature of a substitute; and being 
taken, there were — a3^es 86, noes 40. 

So (two-thirds having voted in favor thereof) the rules were sus- 
pended and the bill,as amended, was passed. 



[Senate, third session, March 3, 1871,Cong. Globe, vol. 97, p, 1994.] 
TRADEMARKS ON FOREIGN WATCHES. 

A message from the House of Representatives, by Mr. Clinton 
Lloyd, its chief clerk, announced that the House had passed the bill 
(S. 829) in relation to fraudulent trademarks upon foreign watches, 
with an amendment in which it requested the concurrence of the Senate. 

Mr. Morrill, of Vermont. I ask the Senate to consider now the 
amendment which has just come over from the House to a Senate bill. 

By unanimous consent, the Senate proceeded to consider the amend- 
ment of the House of Representatives to the bill (S. 829) in relation to 
fraudulent trademarks upon foreign watches. The amendment was 
to strike out all of the original bill after the enacting clause, and to 
insert in lieu thereof the following: 

That from and after the 1st day of April, 1871, no watches, watch cases, watch 
movements, or parts of watch movements of foreign manufacture which shall copy 
or simulate the name or trade mark of any domestic manufacturer shall be admitted 
to entry into the custom-houses of the United States, unless such domestic manufac- 
turer is the importer of the same. 

Sec. 2. That domestic manufacturers of watches who have adopted trade marks 
may cause to be recorded in the Treasury of the United States, in a book to be kept 
for that purpose, and under such rules and regulations as may be prescribed by the 
Secretary of the Treasury, their names, residences, and descriptions of trade marks, 
and furnish to the Secretary facsimiles of such trade marks; and it shall be the duty 
of the Secretary to transmit one or more copies of the same to each collector or other 
proper officer of the customs of the United States, to be used by such officers in the 
execution of the first section of this act. 



390 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Mr. Morrill, of Vermont. 1 will merely say that this is a slight 
modification of the bill passed hy the Senate, is not so sweeping in its 
provisions, and confines the confiscation to such watches as really 
imitate American trademarks. 

The amendment was concurred in. 



[House of Representatives, third session, March 3, 1871, Cong. Globe, vol. 97, p. 1934.] 
MESSAGE FROM THE SENATE. 

A message from the Senate, by Mr. Sympson, one of its clerks, 
informed the House that the Senate had agreed to the amendment of 
the House of Representatives to the bill (S. 829) in relation to fraudu- 
lent trademarks upon foreign watches. 

[House of Representatives, third session, March 3, 1871,,Cong. Globe, vol.97,p.l935.] 
ENROLLED BILLS, ETC., SIGNED. 

Mr. Beatty, from the Committee on Enrolled Bills, reported that the 
committee had examined and found truly enrolled bills of the follow- 
ing titles, when the Speaker signed the same: 

* * * * * * * 

A bill (S. 829) in relation to fraudulent trademarks upon foreign 
watches. 

[Senate, third session, March 3, 1871, Cong. Globe, vol. 97, p. 2002.] 
MESSAGE FROM THE HOUSE. 

A message from the House of Representatives, by Mr. Clinton 
Lloyd, its chief clerk, announced that the Speaker of the House had 
signed the following enrolled bills and joint resolutions; and they were 
thereupon signed by the Vice-President: 

* * * -x- * * * 

A bill (S. 829) in relation to fraudulent trademarks upon foreign 
watches. 

[Senate, third session, March 3, 1871, Cong. Globe, vol. 97, p. 2009.] 
PRESIDENTIAL APPROVALS. 

A message from the President of the United States, by Mr. Horace 
Porter, his secretary, announced that the President had this day 
approved and signed the following acts and joint resolutions: 

******* 

An act (S. 829) in relation to fraudulent trademarks upon foreign 
watches. 

The act is as follows: 

[Laws of the U. S., Forty-first Congress, chap. 125, approved March 3, 1871; 16 U. S. Stat. L., p. 580; Cong. 
Globe, vol. 97, Appendix, p. 394.] 

AN ACT in relation to fraudulent trade marks upon foreign watches. 

Be it enacted by the Senate and House of Representatives of the United States of America 
in Congress assembled, That from and after the 1st day of April, 1871, no watches, 
watch cases, watch movements, or parts of watch movements, of foreign manu- 
facture, which shall copy or simulate the name or trade mark of any domestic manu- 
facturer shall be admitted to entry at the custom-houses of the United States unless 
such domestic manufacturer is the importer of the same. 



FOBTY-FIEST CONGRESS. 391 

Sec. 2. That domestic manufacturers of watches who have adopted trade marks 
may cause to be recorded in the Treasury of the United States, in a book to be kept 
for that purpose, under such rules and regulations as may be.prescribed by the Sec- 
retary of the Treasury, their names, residences, and descriptions of trade marks, and 
furnish to the Secretary facsimiles of such trade marks ; and it shall be the duty of 
the Secretary to transmit one' or more copies of the same to each collector or other 
proper officer of the customs of the United States, to be used by such officers in the 
execution of the first section of this act. 



H. R. 1714. — A bill to revise, consolidate, and amend the statutes relating to patents 
and copyrights. Sections 77-84 relate to trade marks. Introduced by 
Hon. Thomas A. Jenckes, of Rhode Island, from the Committee on 
Patents, April 7, 1870. Passed in House and Senate and approved by 
the President July 8, 1870. (16 U. S. Stat. L., p. 210, chap. 230.) 

[House of Representatives, second session, April 7, 1870, Cong. Globe, vol. 90, p. 2502.] 

Mr. Jenckes, by unanimous consent, from the Committee on Patents, 
reported a bill (H. E. ITltt) to revise, consolidate, and amend the stat- 
utes relating to patents and copyrights; which was read a first and 
second time, ordered to be printed, and recommitted. 

[House of Representatives, second session, April 13, 1870, Cong. Globe, vol. 90, p. 2650.] 

Mr. Jenckes, by unanimous consent, from the Committee on Patents, 
reported back with amendments the bill (H. R. 1714) to revise, con- 
solidate, and amend the statutes relating to patents and copyrights, 
and moved that the bill be recommitted, and, with the amendments, 
printed. 

The motion was agreed to. 



[House of Representatives, second session, April 14, 1870, Cong. Glob^-, vol. 90, p. 2679.] 
PATENT AND COPYRIGHT LAWS. 

Mr. Jenckes, from the Committee on Patents, reported back with 
amendments, and with the recommendation that it do pass, the bill 
(H. R. 1714) to revise, consolidate, and amend the statutes relating to 
patents and copyrights. 

The following extract contains the introductory remarks of Mr. 
Jenckes upon the scope of the bill and the manner of its preparation. 

[House of Representatives, second session, April 14, 1870, Cong. Globe, vol. 90, p. 2679.] 

Mr. Jenckes. Mr. Speaker, if the House will indulge me I think 
they will obtain a sufficient idea of what is proposed by this bill, from 
a statement in explanation of its provisions, withoufreading it in full. 

The bill now reported from the Committee on Patents is based upon 
the revision of the laws relating to patents and copyrights made by the 
commissioners of revision appointed under the statute authorizing a 
revision of the laws of the United States. That revisal of these par- 
ticular statutes was reported to this House early in this Congress and 
referred by the House to the Committee on the Revision of the Laws 
of the United States. It was examined by that committee and was 
found to embody all the provisions of existing law, in brief, clear, and 
precise language. They subsequently reported it to the House and 
recommended that it be referred to the Committee on Patents. 

In prospect of this proposed revision the Committee on Patents had 
already received numerous communications from those interested in 
S. Doc. 20 26* 



392 EEVISION OF STATUTES EELATING TO PATENTS, ETC. 

the subject, and also numerous bills and petitions that had been filed 
in the House and referred to that committee, proposing various amend- 
ments to the existing laws. They had taken all these into considera- 
tion and invited the presence of persons interested in the different 
subjects to which the amendments were intended to apply, and encour- 
aged discussion from those interested and from those learned in this 
branch of the laws upon those proposed amendments. They were 
heard at great length and the committee were very careful to give a 
hearing, either orally or by written communication, to any and every 
person who supposed that there were defects in the existing laws which 
ought to be remedied, or who could make plain and clear the practice 
under the laws so as to secure more perfectly the rights which these 
laws were intended to protect. The result of all these hearings and 
discussions has been the adoption by the committee of certain propo- 
sitions of amendment to these laws, which they have embodied in the 
bill now before the House. * * * 



The remarks of Mr. Jenckes upon the provisions of the bill relating 
to trademarks were as follows: 

[House of Representatives, second session, April 14, 1870, Cong, Globe, vol. 90, p. 2683.] 

The committee have recommended also certain provisions which are 
entirely new concerning trademarks. These have not heretofore been 
the subject of any national law. It is a subject embraced within the 
common-law jurisdiction of all the courts of the country, and also 
within the general equity jurisdiction of all the State courts. This bill 
does not propose to interfere at all with the local and State jurisdic- 
tions. A person, standing upon his common-law rights, may still go 
into the State courts and defend a trademark exactly as he may do now; 
but if he chooses to register his claim at the Patent Office, pay his fee, 
and take his certificate of registration, it will protect him throughout 
the United States in the same way as a patent for a design or a copyright 
is protected. 

Concerning trademarks, we are at present in an anomalous condi- 
tion, which perhaps is not understood by the House generally. By 
certain treaties or conventions with Belgium, France, and Russia, we 
have agreed to recognize the validity of the trademarks of those coun- 
tries upon their being registered in the Patent Office of the United 
States, and to give them the same effect throughout the United States 
that they have in the country where they originated; and trademarks 
recognized by the law of this country have the same effect throughout 
those European countries as the trademarks secured by the citizens or 
subjects of those countries. Thus by treaties, which are a part of the 
supreme law of the land, we have secured to subjects of those three 
nations rights which are not by national law secured to citizens of the 
United States. The rights which it is proposed to protect by regis- 
tration of trademarks- are not greater in any sense than those which 
are secured to citizens of foreign countries. In fact, these provisions 
are substantially those of the continental nations, and also chose of the 
trademarks statute of Great Britain, with which country I believe we 
are also engaged in negotiations for a similar treaty. The desirable- 
ness of these provisions I have not heard questioned by anyone. I will 
state their effect. 

A facsimile of the trademark is to be sent to the Patent Office. The 
kind of business, as well as the kind of goods, to be protected is to be 



FORTY-FIEST CONGRESS. 398 

described briefly and correctly. A fee of $25 is to be paid into the 
Treasury of the United States. A certificate of such registration, with 
a facsimile of what is filed in the ofiice, is to be delivered, under the 
seal of the Patent Office, to the person causing such registration. It 
is to be in effect for thirty 3^ears from the date of registration, and if 
it be copied by a person not having a right to it, or if it be copied by 
a person in such manner that the imitation is calculated to deceive the 
public, then the party may have his remedy in any court of the United 
States for the injury done him. 

It does not allow any person to register a trademark in the Patent 
Office who is not entitled to it at common law. It does not allow any 
man to take up any other man's trademark and by paying $25 claim it 
for himself or his assigns. Nor does it allow him to imitate a trade- 
mark so nearl}^ as to deceive the public. That is expressly prohibited. 
Nor does it allow an}^ person to register a trademark for any substance 
or article injurious in itself, or to use a trademark on any article or in 
any kind of business calculated to deceive the public. All those things 
are specially prohibited, and thus guarded it seems to be a safe legis- 
lative provision. 

[House of Representatives, second session, April 20, 1870, Cong. Globe, vol. 91, p. 2855.] 

Mr. Cleveland. I have certain amendments which I desire to offer. 

* * * * * * * 

Mr. Cleveland. In section 79, line 3, 1 move to strike out the word 
"unless" and insert "except in cases where such trademark is claimed 
for and applied to articles not manufactured in this country, and in 
which;" so that the section will then read: 

Sec. 79. Such trade-mark shall remain in force for thirty years from the date of 
such registration, except in cases where such trade-mark is claimed for and applied 
to articles not manufactured in this country and in which it received protection 
under the laws of any foreign country for a shorter period, in which case it shall 
cease to have any force in this country by virtue of this act, at the same time that it 
becomes of no effect elsewhere; and during the period that it remains in force it 
shall entitle the person, firm, or corporation registering the same to the exclusive use 
thereof, so far as regards the description of goods to which it is appropriated in the 
statement filed under oath as aforesaid, and no other person shall lawfully use the 
same trade-mark, or substantially the same, or so nearly resembling it as to be cal- 
culated to deceive, upon substantially the same description of goods, etc. 

Mr. Stevens. I am willing to consider that amendment as pending. 
Mr. Cleveland. I have another amendment to offer to the same 
section. Add the following proviso: 

Provided, That six months prior to the expiration of said term of thirty years appli- 
cation may be made for a renewal of such registration, under regulations to be pre- 
scribed by the Commissioner of Patents; and the fee for such renewal shall be the 
same as for the original registration, and such trade-mark shall remain in force for a 
further term of thirty years: Provided further, That nothing in this section shall be 
construed by any court as abridging or in any manner affecting unfavorably the 
claim of any person, firm, corporation, or company to any trade-mark after the 
expiration of the term for which said trade-mark was registered. 

Mr. Stevens. I do not object to the gentleman moving that amend- 
ment and having it pending before the House. 

Mr. Jenckes. I hope the gentleman's amendment will be accepted. 

* * * * * * * 

Mr. Cleveland. * * * Section 79 of this bill is in relation to 
trademarks. The Committee on Patents have very wisely, it seems 
to me, introduced new matter under the head of "trademarks." 



394 REVISION OF STATUTES RELATIISrO TO PATENTS, ETC. 

Trademarks are very little understood in this or in any other country 
by other than the particular persons interested in the establishment of 
trademarks. Their value is really not generally appreciated by the 
community at large. It is only of late years that the courts have been 
inclined to construe liberally the common law under which the right 
is now claimed to establish trademarks upon manufactured articles. 
It is not very many years back 

Mr. Stevens. How long time does the gentleman desire upon this 
subject? 

Mr. Cleveland. Not many minutes more. 

* * * * * * * 

Mr. Cleveland. I will have to leave the line of argument I had 
begun and confine myself to the amendment I have offered. 

* ****** 

Mr. Cleveland. I will ask for ten minutes more. 

Mr. Stevens. Very well. 

Mr. Cleveland. It is only within a few years that the courts of any 
country have been inclined to construe liberally the common law in 
regard to trademarks. Only a few years since the highest court in 
England decided that the practice of establishing trademarks was a 
practice promotive of monopolies in trade; but of late years a more 
liberal view has obtained in the courts, both of England and of this 
country, and the courts are now inclined to construe the common law 
so as to protect trademarks for the good of the public itself, as well 
as in behalf of manufacturers and those persons who are engaged in 
trade. 

It is claimed, and justly claimed, that in the protection of trade- 
marks the courts are protecting the common people — people who are 
not expert in the purchase of the articles they need. A trademark is 
not necessarily a particular mark placed upon the article manufactured. 
It ma}^ be merely the maker's name put upon the article, or a distinc- 
tive label, so that those who want to purchase an article of a particular 
manufacture may be able to identify it and get the genuine article. 
Without such protection, the purchaser is constantly liable to be mis- 
led, unless he is able to examine as an expert every article that he may 
desire for personal or household use or for manufacturing purposes. 
But under the common law of trademarks, as now construed by the 
courts, the public is protected. When you purchase an article under 
a given name or with a particular mark, you may be certain that the 
article is what it purports to be, unless some one has ventured to put 
upon the market an imitation the sale of which the courts will stop 
when the matter is brought to their attention. 

Within the last few years the courts of England and of this country 
have gone still further, and have so construed the law as to protect 
manufacturers as well as the public. This is a great advance upon the 
position occupied by the courts only a few ^^ears ago. Following the 
direction indicated by these liberal constructions of the courts, this 
bill proposes to extend and enlarge the protection afforded to manu- 
facturers. It provides a method by which a manufacturer may register 
his trademark for a given term. In section 79 the committee have 
provided for the registration of trademarks, which registration is to 
continue in force for thirty years. I presume the committee would 
have fixed a much longer term but for the provision of the Constitu- 



FOUTY-FIRST CONGRESS. 395 

tion that protection of this kind shall be granted only for a limited 
period. My amendment provides that at the expiration of the first 
term of thirty years the registration may be renewed so as to extend 
over a second term of thirty years; and it is further provided that the 
manufacturer shall not lose his protection under the common law in 
consequence of the expiration of those two terms of thirty years each. 

This bill contains other important provisions which I have not time 
to discuss at length. In section 80 there are some important provisions 
which I hope the House will examine carefully before they are voted 
upon. It is well known that laws of this character, while intended to 
be liberal and to extend privileges, may be in fact restrictive, and may 
defeat by injudicious phraseology the very objects they seek to pro- 
mote. I am afraid some of the provisions of this bill are not broad 
enough; and as to some, I think the bill would have been better if 
they had not been introduced; but as the committee, after thorough 
examination of the subject, have deemed them necessary, I am willing 
to acquiesce in the judgment of the committee. 

I shall move to insert after the word "obtain," in line 9 of section 
78, the word "special," so that the phrase will read, " for exclusive use 
within the United States may obtain special protection for such lawful 
trade-marks." This bill makes the Commissioner of Patents a judge. 
He is to determine very important questions. He is to decide what 
are and what are not trademarks. After he has decided that a mark 
embraced in a particular application ' ' is not and can not become a 
lawful trade-mark" according to the language of this bill, a shade may 
thereby be cast over it in the courts when the manufacturer afterwards 
seeks to sustain his claim under the common law. This difficulty is 
perhaps unavoidable. I have submitted to the committee a suggestion 
designed to obviate it;, but the committee sees no way out of the 
difficulty. The bill provides: 

The Commissioner of Patents shall not receive and record any proposed trade- 
mark which is not and can not become a lawful trade-mark, or which is merely the 
name of a person, firm, or corporation only, unaccompanied by a mark sufficient to 
distinguish it from the same name when used by other persons, or which is identical 
with a trade-mark appropriate to the same class of merchandise and belonging to a 
different owner, and already registered or received for registration, or which so nearly 
resembles such last-mentioned trade-mark as to be likely to deceive the public. 

Now, the names of persons and corporations are trademarks, and 
the Commissioner of Patents can not by any decision of his prevent 
them from becoming trademarks. They are acknowledged as trade- 
marks everywhere, so far as I can ascertain. They have been recently 
acknowledged as trademarks in France. They have also been acknowl- 
edged as trademarks in England. But by this provision the Com- 
missioner of Patents may cast a shade upon trademarks to which these 
people are legally entitled and to which their claims have always 
been recognized. I do not think, however, that this provision will 
accomplish the purpose of the Committee on Patents. 

Mr. Stevens. I now yield to the gentleman from Ehode Island. 

Mr. Jenckes. The gentleman from New Jersey [Mr. Cleveland] 
expresses his approval of the provisions reported by the Committee 
on Patents in favor of the recognition of trademarks, and I am glad 
to have his support. To the amendments which he has proposed to 
the seventy-ninth section I see no objection, and if there be no objec- 
tion from any other quarter, I trust by unanimous consent they may 
be considered as adopted. 



396 REVISION OF STATUTES RELATING TO PATENTS, ETC. 5 

The Speaker. If there be no objection, the two amendments pro- 
posed by the gentleman from New Jersey to the seventy-ninth section 
will be considered as adopted. 

There was no objection, and the amendments were accordingly 
agreed to. 

[House of Representatives, second session, April 21, 1870, Cong. Globe, vol. 91, p. 2880.] 
PATENT AND COPYRIGHT LAWS. 

The bill was then ordered to be engrossed and read a third time; 
and being engrossed, it was accordingly read the third time, and passed. 

[Senate, second session, April 25, 1870, Cong. Globe, vol. 91, p. 2941.] 
MESSAGE FROM THE HOUSE. 

A message from the House of Representatives, by Mr. McPherson, 
its Clerk, announced that the House had passed a bill (H. R. 1714) to 
revise, consolidate, and amend the statutes relating to patents and copy- 
rights, in which the concurrence of the Senate was requested. 

[Senate, second session, April 25, 1870, Cong. Globe, vol. 91, p. 2943.] 
HOUSE BILL REFERRED. 

The bill (H. R. 1714) to revise, consolidate, and amend the statutes 
relating to patents and copyrights was read twice by its title, and 
referred to the Committee on Patents. 



[Senate, second session. May 31, 1870, Cong. Globe, vol. 92, p. 3941.] 
REPORTS OF COMMITTEES. 

Mr. Willey, from the Committee on Patents, to whom was referred 
the bill (H. R. 1714) to revise, consolidate, and amend the statutes 
relating to patents and copyrights, reported it with amendments. 

[Senate, second session, June 24, 1870, Cong. Globe, vol. 93, p. 4819.] 
PATENTS AND COPYRIGHT LAWS. 

The Senate, as in Committee of the Whole, proceeded to consider 
the bill (H. R. 1714) to revise, consolidate, and amend the statutes 
relating to patents and copyrights. * * * 

The debate upon the bill is given below, 

[Senate, second session, June 24, 1870, Cong. Globe, vol. 93, p. 4821.] 

Mr. WiLLEY. The several sections next succeeding the one just read 
introduce a new feature into our patent laws connected with trade- 
marks. The committee instructed me to report an amendment to 
strike out those sections. Subsequent reflection has suggested to me 
whether the action of the committee in that respect was altogether 
best, and I am disposed to think that some of the members of the 
committee perhaps have come to the same conclusion. 

Mr. Sumner. I should hesitate very much about striking them out. 

Mr. WiLLEY. That is just what I am going to say, if the Senator 
pleases. The committee did not understand the subject very well 



I 



FORTY-FIRST CONGRESS. 397 

when they made this report, and did not at that time examine it. They 
thought that under the common law every man had a right to his own 
trademark and could protect himself, but subsequent reflection and 
examination have convinced me, at least, that these sections ought to 
be retained. I have examined them and I see that they have been 
drawn by a careful hand, and so far as I can understand the matter, 
the3^meet the case very fairly. They nationalize our trademarks and 
put us on an equalit}^ with other nations in that respect. It strikes me, 
on reflection, that the}^ ought to be retained. 

That is the result to which my own mind, as a member of the com- 
mittee, has come, and I am very willing that the Senate should disa- 
gree with the recommendation of the committee. 

Mr. Sumner. I would remark that they seem to me of practical 
value to our own citizens, especially abroad. How can they have their 
trademarks protected in other countries if a protection is not provided 
for trademarks here ? There must be reciprocity in that respect, and 
it seems to me that single consideration is decisive of the case. 

But, independent of our fellow-citizens who now have interests 
abroad, I think that these sections are of value to all here at home, 
having put into the text of a statute rules and principles which have 
been matured at the common law and recognized by our courts, but 
which have new character and value and explicitness from being set 
forth in the statute. I hope, therefore, that the chairman of the com- 
mittee will allow these sections to stay in the bill. 

Mr. Carpenter. As a member of the committee, I desire to join 
witb our chairman in saying that, on reflection, I think these sections 
ought to be retained. The}^ are wholly unnecessary at the common 
law, and so far as the rights of our citizens are concerned in England 
they are mere surplusage, the common law granting all that would be 
covered by these sections; but on the the continent of Europe it is 
different, and for that reason, if none other, the}^ should be retained. 
I hope, therefore, the Senate will not concur in the recommendation 
of the committee to strike them out. 

Mr. WiLLEY. I hope the Senate will disagree with the recommenda- 
tion of the committee. 



[House of Representatives, second session, June 25, 1870, Cong. Globe, vol. 93, p. 4849.] 
MESSAGE FROM THE SENATE. 

* * * The message further announced that the Senate had passed 
a bill of the House (H. E. 1714) to revise, consolidate, and amend the 
statutes relating to patents and copyrights, with amendments, in which 
the concurrence of the House was requested. 



[Senate, second session, July 6, 1870, Cong. Globe, vol. 93, p. 5241.] 
ENROLLED BILLS, ETC., SIGNED. 

Mr. Beatty, from the Committee on Enrolled Bills, reported that 
the committee had examined and found truly enrolled bills * * * 
of the following titles; when the Speaker signed the same: 

******* 

A bill (H. R. 1714) to revise, consolidate, and amend the statutes 
relating to patents and copyrights. 



398 REVISION OF STATUTES RELATING TO PATENTS, ETO. 

[Senate, second session, July 6, 1870, Cong. Globe, vol. 93, p. 5269.] 
MESSAGE FROM THE HOUSE. 

A message from the House of Representatives by Mr. Lloyd, its 
Chief Clerk, announced * * * that the Speaker of the House had 
signed enrolled bills * * * • and they were thereupon signed by 
the Vice-President: * * * 

A bill (H. R. 1714) to revise, consolidate, and amend the statutes 
relating to patents and copyrights. 



[House of Representatives, second session, July 8, 1870, Cong. Globe, vol. 93, p. 6355.] 
MESSAGE FROM THE PRESIDENT. 

A message from the President of the United States by Mr. Horace 
Porter, his private secretary, informed the House that the President 
had approved and signed bills of the following titles: 

* * * * * * * 

An act (H. R. 1714) to revise and consolidate and amend the statutes 
relating to patents and copyrights. 



The portion of the statute relating to trademarks is as follows: 

[Laws of United States, Forty-first Congress, chap. 230, 16 U. S. Stat. L., p. 210; Cong. Globe, vol.94, 

appendix, pp. 681,685.] 

Be it enacted by the Senate and House of Representatives of the United States of America 
in Congress assembled, * * * 

Sec. 77. And be it further enacted, Tliat any person or firm domiciled in the United 
States, and any corporation created by the authority of the United States, or of any 
State or Territory thereof, and any person, firm, or corporation resident of or located 
in any foreign country which by treaty or convention affords similar privileges to 
citizens of the United States, and who are entitled to the exclusive use of any lawful 
trade-mark (or who intend to adopt and use any trade-mark) for exclusive use within 
the United States, may obtain protection for such lawful trade-mark by complying 
with the following requirements, to wit: 

First. By causing to be recorded in the Patent Office the names of the parties, and 
their residences and place of business, who desire the protection of the trade-mark. 

Second. The class of merchandise and the particular description of goods comprised 
in such class, by which the trade-mark has been or is intended to be appropriated. 

Third. A description of the trade-mark itself, with facsimiles thereof, and the mode 
in which it has been or is intended to be applied and used. 

Fourth. The length of time, if any, during which the trade-mark has been used. 

Fifth. The payment of a fee of twenty-five dollars, in the same manner and for the 
same purpose as the fee required for patents. 

Sixth. The compliance with such regulations as may be prescribed by the Com- 
missioner of Patents. 

Seventh. The filing of a declaration, under the oath of the person, or of some mem- 
ber of the firm or officer of the corporation, to the effect that the party claiming pro- 
tection for the trade-mark has a right to the use of the same, and that no other person, 
firm, or corporation has the right to such use, either in the identical form or having 
such near resemblance thereto as might be calculated to deceive, and that the descrip- 
tion and facsimiles presented for record are true copies of the trade-mark sought to 
be protected. 

Sec. 78. And be it further enacted, That such trade-mark shall remain in force for 
thirty years from the date of such registration, except in cases where such trade-mark 
is claimed for and applied to articles not manufactured in this country and in which 
it receives protection under the laws of any foreign country for a shorter period, in 
which case it shall cease to have any force in this country by virtue of this act at the 
same time that it becomes of no effect elsewhere, and during the period that it remains 
in force it shall entitle the person, firm, or corporation registering the same to the 
exclusive use thereof so far as regards the description of goods to which it is appro- 
priated in the statement filed under oath as aforesaid, and no other person shall law- 
fully use the same trade-mark, or substantially the same, or so nearly resembling it as 



FOETY-SECOND CONGRESS. 399 

to be calculated to deceive, upon substantially the same description of goods : Provided, 
That six months prior to the expiration of said term of thirty years, application may 
be made for a renewal of such registration, under regulations, to be prescribed by the 
Commissioner of Patents, and the fee for such renewal shall be the same as for the 
original registration; certificate of such renewal shall be issued in the same manner 
as for the original registration, and such trade-mark shall remain in force for a further 
term of thirty years: And provided further, That nothing in this section shall be con- 
strued by any court as abridging or in any manner affecting unfavorably the claim 
of any person, firm, corporation, or company to any trade-mark after the expiration 
of the term for which such trade-mark was registered. 

Sec, 79. And he it further enacted, That any person or corporation who shall repro- 
duce, counterfeit, copy, or imitate any such recorded trade-mark, and affix the same 
to goods of substantially the same descriptive properties and qualities as those 
referred to in the registration, shall be liable to an action in the case for damages for 
such wrongful use of said trade-mark, at the suit of the owner thereof, in any court 
of competent jurisdiction in the United States, and the party aggrieved shall also 
have his remedy according to the course of equity to enjoin the wrongful use of his 
trade-mark and to recover compensation therefor in any court having jurisdiction 
over the person guilty of such wrongful use. The Commissioner of Patents shall not 
receive and record any proposed trade-mark which is not and cannot become a law- 
ful trade-mark, or which is merely the name of a person, firm, or corporation only, 
unaccompanied by a mark sufficient to distinguish it from the same name when used 
by other persons, or which is identical with a trade-mark appropriate to the same 
class of merchandise and belonging to a different owner, and already registered or 
received for registration, or which so nearly resembles such last-mentioned trade- 
mark as to be likely to deceive the public: Provided, That this section shall not pre- 
vent the registry of any lawful trade-mark rightfully used at the time of the passage 
of this act. 

Sec. 80. And be it further enacted, That the time of the receipt of any trade-mark at 
the patent oflSce for registration shall be noted and recorded, and copies of the trade- 
mark and of the date of the receipt thereof, and of the statement filed therewith, 
under the seal of the patent office, certified by the commissioner, shall be e^ddence 
in any suit in which such trade-mark shall be brought in controversy. 

Sec. 81. And be it further enacted, That the commissioner of patents is authorized to 
make rules, regulations, and prescribe forms for the transfer of the right to the use 
of such trade-marks, conforming as nearly as practicable to the requirements of law 
respecting the transfer and transmission of copyrights. 

Sec. 82. And be it further enacted. That any person who shall procure the the regis- 
try of any trade-mark, or of himself as the owner thereof, or an entry respecting a 
trade-mark in the patent office under this act, by making any false or fraudulent rep- 
resentations or declarations, verbally or in writing, or by any fraudulent means, shall 
be liable to pay damages in consequence of any such registry or entry to the person 
injured thereby, to be recovered in an action on the case before any court of compe- 
tent jurisdiction within the United States. 

Sec. 83. And be it further enacted. That nothing in this act shall prevent, lessen, 
impeach, or avoid any remedy at law or in equity which any party aggrieved by any 
wrongful use of any trade-mark might have had if this act had not been passed. 

Sec 84. And be it further enacted, That no action shall be maintained under the 
provisions of this act by any person claiming the exclusive right to any trade-mark 
which is used or claimed in any unlawful business, or upon any article which is 
injurious in itself, or upon any trade-mark which has [been fraudulently obtained, 
or which has been formed and used with the design of deceiving the public in the 
purchase or use of any article of merchandise. 



FORTY-SECOND CONGRESS. 

H. R. 2597. — A bill to protect domestic trademarks. Introduced by Hon. John 
Rogers, of New York, April 29, 1872. Referred to the Committee on 
Commerce. Not reported. 

[House of Representatives, second session, April 29, 1872, Cong. Globe, vol. 103, p. 2885.] 
DOMESTIC TKADEMARKS. 

Mr. Rogers introduced a bill (H. R. 2597) to protect domestic trade- 
marks; which was read a first and second time, referred to the Com- 
mittee on Commerce, and ordered to be printed. 



400 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

FOETY-THIRD CONGRESS. 

H. R. 4065. — A bill to amend the statutes relating to trademarks and labels. Intro- 
duced by Hon. Stevenson Archer, of Maryland, December 21, 1874. 
Referred to the Committee on Patents. Not reported. 

[House of Representatives, second session, December 21, 1874, Cong. Record, vol. 3, part 1, p. 169.] 

TRADEMARKS AND LABELS. 

Mr. Archer introduced a bill (H. R. 4065) to amend the statutes 
relating to trademarks and labels; which was read a first and second 
time, referred to the Committee ob Patents, and ordered to be printed. 

FORTY-FOURTH CONGRESS. 

Two bills were introduced in the House and one in the Senate in this 
Congress. 

H. R. 2547. — A bill to revise and amend section 5416 of the Revised Statutes making 
it a misdemeanor to counterfeit registered trademarks. Introduced 
by Hon. Abram S. Hewitt, of New York, March 6, 1876. Referred 
to the Committee on Patents. Not reported. 

[House of Representatives, first session, March 6, 187G, Cong. Record, vol.4, part 2, p. 1487.] 

TRADEMARKS. 

Mr. Hewitt, of New York, introduced a bill (H. R. 2547) to revise 
and amend section 5416 of the Revised Statutes, making it a mis- 
demeanor to counterfeit registered trademarks; which was read a first 
and second time, referred to the Committee on Patents, and ordered 
to be printed. 



H. R. 2548. — A bill to revise and amend the Revised Statutes in relation to registra- 
tion of trademarks. Introduced by Hon. Abram S. Hewitt, of New 
York, March 6, 1876. Referred to the Committee on Patents. Not 
reported. 

[House of Representatives, first session, March 6, 1876, Cong. Record, vol 4, part 2, p. 1487.] 

Mr. Hewitt, of New York, also introduced a bUl (H. R. 2548) to 
revise and amend the Revised Statutes in relation to registration of 
trademarks; which was read a first and second time, referred to the 
Committee on Patents, and ordered to be printed. 



S. 846. — A bill to punish the counterfeiting of trademark goods and the sale or deal- 
ing in of counterfeit trademark goods. Introduced by Hon. Roscoe 
Conkling, of New York, May 18, 1876. Passed in Senate and House. 
Approved by the President August 16, 1876. (19 U. S. Stat. L., p. 141, 
chap. 274. ) 

[Senate, first session. May 18, 1876, Cong. Record, vol. 4, part 4, p. 3146.] 

BILLS INTRODUCED. 
******* 

Mr. Conkling asked, and by unanimous consent obtained, leave to 
introduce a bill (S. 846) to punish the counterfeiting of trademark 
goods and the sale or dealing in of counterfeit trademark goods; 
which was read twice by its title, and, with the accompanying papers, 
referred to the Committee on the Judiciary. 



FORTY-FOURTH CONGRESS. 401 

[Senate, first session, June 24, 1876, Cong. Record, vol. 4, part 5, p. 4133.] 

REPORTS OF COMMITTEES. 
******* 

Mr. Conkling, from the same committee [Judiciary] to whom was 
referred the bill (S. 846) to punish the counterfeiting of trademark 
goods and the sale of or dealing in counterfeit trademark goods, 
reported it with amendments. 



[Senate, first session, June 29, 1876, Cong, Record, vol, 4, part 5, p. 4234.] 
TRADEMARK GOODS. 

Mr. Conkling. I move that the Senate proceed to the consideration 
of the trademark bill, so called. 

The motion was agreed to, and the bill (S. 846) to punish the coun- 
terfeiting of trademark goods and the sale or dealing in of counterfeit 
trademark goods was considered as in Committee of the Whole. 

The Committee on the Judiciary proposed to amend section 1, line 
12, by striking out, after the words ''imprisoned for," the words "not 
less than six months and;" so as to make the section read: 

That every person who shall have in his possession, or deal in, or sell, or keep or 
offer for sale, or cause or procure the sale of, any goods of substantially the same 
descriptive properties as those referred to in the registration of any trade-mark, 
pursuant to the statutes of the United States, to which, or to the package in which 
the same are put up, is fraudulently affixed said trade-mark, or any colorable imita- 
tion thereof, calculated to deceive the public, knowing the same to be counterfeit or 
not the genuine goods referred to in said registration, shall, on conviction thereof, 
be imprisoned for not more than two years, and shall also be liable to the aggrieved 
owner of said trade-mark in the penal sum of |1,000, to be recovered in a civil action. 

The amendment was agreed to. 

The committee proposed to amend the seventh section so as to make 
it read: 

Sec. 7. That any person who shall, with intent to injure or defraud or to aid in 
defrauding or injuring the owner of any trade-mark, or any other person lawfully 
entitled to use or protect the same, buy, sell, offer for sale, deal in, or have in his 
possession any used or empty box, envelope, wrapper, case, bottle, or other package, 
to which is affixed, so that the same may be obliterated without substantial injury 
to such box or other thing aforesaid, any trade-mark, registered pursuant to the 
statutes of the United States, not so defaced, erased, obliterated and destroyed as to 
prevent its fraudulent use, shall, on conviction thereof, be pmiished as prescribed in 
the first section of this act. 

The amendment was agreed to. 

The next amendment reported by the committee was in section 10, 
line 4, after the words "imprisoned for," to strike out "not less than 
three months and." 

The amendment was agreed to. 

The President ^rt* tempore. The word "hereof," in the second and 
third sections, seems to be in conflict with other words. 

Mr. Conkling. Let the word "hereof" be stricken out in both 
sections and the words "of this act" inserted. 

The amendment was agreed to. 

Mr. Dawes. I desire to make an inquiry of the Senator from New 
York. If I understand the bill, I am very heartily in support of it. 
The first section provides a penalty for the sale of "any goods of sub- 
stantially the same descriptive properties as those referred to in the 
registration of any trademark," but they must have that trademark 



402 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

upon them, as I understand. I ask whether it is intended by the bill 
to at all interfere with the manufacture of ' ' goods of substantially the 
same descriptive properties as those referred to in the registration of 
any trademark," unless they have that trademark upon them. 

Mr. CoNKLiNG. It is intended to do, as I understand it, what is 
plainly expressed, as the Senator will see, in line 8 of section 1. I 
call his attention to these words: ''To which" — that is, to the com- 
modities that he has referred to — "or to the package in which the 
same are put up, is fraudulently affixed said trademark." 

Mr. Dawes. So far as this section is concerned I can see it very 
plainly; but rather than study the bill through I preferred to ask the 
Senator whether it is intended to make a monopoly in the manufac- 
ture of goods substantially of the same description unless there has 
been a fraudulent use of the trademark? 

Mr. CoNKLiNG. Not at all, as I understand. It is intended to pro- 
vide penalties against those who knowingly and fraudulently pirate 
the trademarks. 

Mr. Dawes. That is what I supposed the bill to be, but the Senator 
will see the object of my inquiry. There are goods, cloths for instance, 
manufactured for different and rival establishments, very much alike, 
that would come under this substantial description, and some one gets 
the advantage, as he has a right to, by having a trademark. I did not 
know whether it were possible by any construction of any part of the 
bill to give the exclusive right of manufacture of goods substantially 
like those covered by this trademark. 

Mr. CoNKLiNG. The committee understood, I am sure, as I under- 
stand, that this bill makes throughout the criterion of liability turn 
upon an element which is this, or equivalent to this: 

To which, or to the package in which the same are put up, is fraudulently affixed 
said trade-mark, or any colorable imitation thereof, calculated to deceive the public, 
knowing the same to be counterfeit or not the genuine goods referred to in said 
registration. 

Mr. Dawes. This section is perfectly correct. 

Mr. CoNKLiNG. I think the Senator will find the same thing runs all 
through. 

Mr. Dawes. If I put it in another form the Senator will see what I am 
trying to take care of. Suppose that two men manufacture an article 
of cloth substantially alike, not absolutely alike, and one of them has 
a trademark. Does this bill give him exclusive right of making all 
articles substantially of that character? 

Mr. CoNKLiNG. If that were in the bill, owing to the frame of the bill, 
the honorable Senator will see it would be found in one of the first three 
sections, because he will observe that after the third section the provi- 
sions of the bill relate to matters not falling within the scope of his 
inquiry. Speaking then of three sections I think the remarks I am 
about to make will be apparent on their face, and they are very brief. 
The intention is to make the scienter^ the guilty knowledge or the guilty 
motive the hinge on which the whole thing turns. Accordingly the 
Senator will see in the second section: 

That every person who fraudulently affixes, or causes or procures to be fraudu- 
lently affixed, any trade-mark registered pursuant to the statutes of the United 
States, or any colorable imitation thereof, calculated to deceive the public, to any 
goods of substantially the same descriptive properties. 



FORTY-FOURTH CONGRESS. 403 

In the third section: 

That every person who fraudulently fills, or causes or procures to be fraudulently 
filled, any package to which is affixed any trade-mark, registered pursuant to the 
statutes 6i the United States, or any colorable imitation thereof, calculated to deceive 
the public. 

And so on. 

Mr. Dawes. They all apply to the use of the mark. 

Mr. CoNKLiNG. Entirely, as I understand, and not only so but to its 
fraudulent use. 

Mr. Dawes. I am very desirous in cooperating in the passage of a 
bill with that intent. 

Mr. CoNKLiNG. If we have succeeded in doing what we tried to do, 
we have done that. 

The bill was reported to the Senate as amended, and the amendments 
were concurred in. 

The bill was ordered to be engrossed for a third reading, read the 
third time, and passed. 



[House of Kepresentatives, first session, July 10, 1876, Cong. Record, vol. 4, part 6, p. 4493.] 
COUNTERFEITING OF TRADEMARK GOODS, ETC. 

Mr. Cox. I ask unanimous consent to take from the Speaker's table 
the bill to punish the counterfeiting of trademark goods and the sale or 
dealing in of counterfeit trademark goods; and I shall ask to put it 
upon its passage. I will say to the House that this bill was very thor- 
oughly considered in the Senate by the Committee on the judiciary of 
that body, and that our Committee on the Judiciary will hardly have time 
to report upon it at this session. Such Senators as Mr. Conkling and 
Mr. Thurman have thoroughly considered it. Its object is to protect 
honest merchants and manufacturers. I hope, therefore, there will 
be no objection to its consideration. 

The Clerk began the reading of the bill, but before concluding, 

Mr. Cox said: I will not ask that the time of the House be taken up 
by the reading of this bill at length, but will ask that it be referred to 
the Committee on Patents, with leave to report it back at any time. 

No objection being made, the bill (S. 846) was accordingly taken from 
the Speaker's table, read a first and second time, and referred to the 
Committee on Patents, with leave to report at any time. 



[House of Representatives, first session, July 20, 1876, Cong. Record, vol. 4, part 5, p. 4775.] 
COUNTERFEITING TRADEMARKS. 

Mr. Sampson, from the Committee on Patents, reported back, with 
amendments, the bill (S. 846) to punish the counterfeiting of trade- 
mark goods and the sale or dealing in of counterfeit trademark goods. 

The amendments reported b}^ the committee were read, as follows: 

In line 3, section 1, strike out the words "have in his possession or," and insert 
after the word " shall," in the same line, the words "with intent to defraud." 

Strike out all after the word "be" in line 11, section 1, and insert "punished by 
fine not exceeding $1,000, or imprisonment not more than two years, or both such 
fine and imprisonment. ' ' 

Strike out all of section 6. 

In line 2, section 7, strike out "or to aid in defrauding or injuring." 

Strike out all of section 8. 

Strike out all after the word "be" in line 4, section 10, and insert the words "pun- 
ished by fine not exceeding |500, or imprisonment not more than one year, or both 
such fine and imprisonment. ' ' 

Strike out all of section 11. 



404 EEVISION OF STATUTES RELATING TO PATENTS, ETC. 

Mr. Sampson. Mr. Speaker, it will only be necessary to detain the 
House for a moment or two in explanation of this bill. 

It is g'enerally conceded that there is not at present sufficient pro- 
tection to trademarks. The public generally, the honest manufac- 
turers and honest dealers throughout the country, are being- constantly 
swindled by counterfeit trademarks. The law of 1870, providing a 
general system for the registration of trademarks, and designed to 
afford better protection by giving right of action in United States 
courts to recover damages for counterfeiting and providing the remedy 
by enjoining counterfeiters, has not proved sufficient. Worthless 
parties engaged in such dishonest practices are not prevented by civil 
actions. A judgment for damages has no terrors for them. If enjoined, 
some relative soon owns the goods, and the business goes on. The 
plaintiff in such action (the measure of damages being the profit) has 
to depend mainly on the testimony and books of the defendant; and it 
is found generally that he who will counterfeit will testify falsel}^ to 
avoid the consequences. Thus the action for damages amounts to but 
little. 

Nearly 400 of the leading manufacturers, merchants, and dealers of 
New York, Boston, and Philadelphia have petitioned Congress very 
earnestly at this session to enact such a law as that contained in this 
Senate bill; and they state their reasons in this forcible language: 

The use of trade-marks on every species of merchandise and manufactures, both 
foreign and domestic, has greatly increased with the expansion of modern trade and 
commerce, and has become a powerful interest throughout the United States of 
America. 

The nefarious but lucrative business of pirating or counterfeiting genuine trade- 
mark goods has too long flourished unchecked, to the incalculable injury of every 
consumer, of every honest merchant, manufacturer, and trader, and has extensively 
multiplied costly and tedious litigation. 

No United States statute yet exists providing penal remedies to punish the coun- 
terfeiting of trade-mark goods or the sale or dealing in of the same. The evils and 
injuries to long-suffering commercial and manufacturing interests consequent upon 
this omission imperatively demand prompt relief and a speedy application of search- 
ing remedies. 

We therefore respectfully petition for relief, and request that Senate bill No. 846, 
introduced into the Senate on the 18th of May, 1876, entitled "A bill to punish the 
counterfeiting of trade-mark goods and the sale or dealing in of counterfeit trade- 
mark goods," may be made law at this session of Congress. 

A word in relation to the amendments proposed by the committee. 
They are seven in number, but are solely for the purpose of accom- 
plishing the following objects: 

First. To render it certain that no one shall be convicted of crime 
or punished under this proposed statute for having any connection 
with fraudulent trademarks unless such connection was willful and 
with intent to defraud, and to throw the burden of proof of this fact 
on the State. 

Second. To so shape the law that all money paid by defendants by 
way of penalty should go into the Treasury as fines in other cases, and 
not go to the informer or the owner of the trademark. The owner is 
provided for now b}^ the civil action for damages. 

Third. To limit the punishment to fine and imprisonment, and not 
allow it to extend to forfeitures of goods also. 

These are the only amendments made by the committee. I will 
yield to the gentleman from Michigan to offer one or two additional 
amendments in the same line to perfect the bill, and will then demand 
the previous question. 



FORTY-FOURTH CONGRESS. 405 

Mr. Congee. I offer three amendments to different places in the 
bill, which I will ask the Clerk to read. They are in the same line as 
those reported from the Committee on Patents: 

1. Insert in line 7, section 9, after the word ^' person," the words " with intent to 
use the same for the purpose of deception ai:d fraud." 

2. In hue 15, same section, after the word "person," insert the words "with intent 
to use the same for the purpose of deception and fraud." 

3. In hne 34, in the same section, after the word "use," insert the words " by the 
holder or owner." 

Mr. Sampson. I am willing to agree to those amendments. I demand 
the previous question. 

The previous question was seconded and the main question ordered. 

Mr. Conger's amendments to the amendment were agreed to; and 
then the amendments of the committee as amended were concurred in. 

The bill as amended was ordered to a third reading; and it was 
accordingly read the third time, and passed. 

Mr. Sampson moved to reconsider the vote by which the bill as 
amended was passed, and also moved that the motion to reconsider be 
laid on the table. 

The latter motion was agreed to. 



[Senate, first session, July 21, 1876, Cong. Record, vol. 4, part 5, p. 4781.] 

MESSAGE FROM THE HOUSE. 
******* 

The message also anjiounced that the House had passed the bill 
(S. 846) to punish the counterfeiting of trademark goods and the sale 
or dealing in of counterfeit trademark goods, with amendments; in 
which the concurrence of the Senate was requested. 



[Senate, first session, July 21, 1876, Cong. Record, vol. 4, part 5, p. 4781.] 
TRADEMARK GOODS. 

The President pro temjpore laid before the Senate the amendments 
of the House of Kepresentatives to the bill (S. '^^^) to punish the 
counterfeiting of trademark goods and the sale or dealing in of coun- 
terfeit trademark goods; which on motion of Mr. Conkling were 
referred to the Committee on the Judiciary, and ordered to be printed. 



[Senate, first session, July 31, 1876, Cong. Record, vol. 4, part 6, p. 5014.] 
COUNTERFEITING OF TRADEMARKS. 

Mr. Conkling. The Committee on the Judiciary have directed me 
to report back the bill (S. 846) to punish the counterfeiting of trade- 
mark goods and the sale or dealing in of counterfeit trademark goods, 
which after having been passed by the Senate was passed by the House 
of Representatives with amendments, and to recommend that the Sen- 
ate nonconcur in the amendments and ask for a conference with the 
House. 

The Senate proceeded to consider the amendments of the House of 
Representatives to the bill. 

On motion of Mr. Conkling, it was 

Resolved^ That the Senate disagree to the amendments of the House 
of Representatives to the said bill, and ask a conference on the disagree- 
ing votes of the two Houses thereon. 



406 EEVTSION OF STATUTES EELATING TO PATENTS, ETC. 

By unanimous consent, it was 

Ordered^ That the conferees on the part of the Senate be appointed 
by the President j97'6> tenvpore. 



[Senate, first session, August 4, 1876, Cong. Record, vol. 4, part 6, p. 5140.] 
COUNTERFEITING OF TRADEMARKS. 

The President ^r6> tempore appointed as conferees on the part of the 
Senate on the bill (S. 846) to punish the counterfeiting of trademark 
goods and the sale or dealing in of counterfeit trademark goods, Mr. 
Conkling, Mr. Frelinghuysen, and Mr. Stevenson. 



[House of Representatives, first session, August 4, 1876, Cong. Record, vol. 4, part 6, p. 5192.] 
COUNTERFEIT TRADEMARKS. 

Mr. Sampson. I desire to call up from the Speaker's table the bill 
(S. 846) to punish counterfeiting of trademark goods and the sale or 
dealing in of counterfeit trademark goods. This bill has been returned 
from the Senate, where the amendments of the House have been dis- 
agreed to. The Senate requests a conference with the House and has 
appointed managers for that purpose. I move that the House insist 
upon its amendments and agree to the conference asked by the Senate. 

There being no objection, the motion was agreed to. 

******* 

The Speaker pro tempore subsequently announced the appointment 
of Mr. J. H. Bagley, Mr. Hartzell, Mr. Sampson as the conferees on 
the part of the House. 

[House of Representatives, first session, August 11, 1876, Cong. Record, vol. 4, part 6, p. 5478.] 

trademarks. 

Mr. J. H. Bagley. I submit a report from a committee of confer- 
ence, which I ask the Clerk to read. 
The Clerk read the report, as follows: 

The Committee of conference on tlie disagreeing votes of the two Houses on the 
amendments of the House to the bill (S. 846) "To punish the counterfeiting of 
trade mark goods and the sale or deahng in of counterfeit trade mark goods" having 
met, after full and free conference have agreed to recommend, and do recommend, to 
their respective Houses as follows: 

That the Senate recede from its disagreement to the amendments of the House 
numbered 2, 5 and 10. 

That the House recede from its amendments numbered 4 and 8. 

That the Senate recede from its disagreement to the amendments of the Senate 
numbered 1, and agree to the same, with an amendment as follows: After the word 
"keep" in line 4 page 1 of the bill, insert the words "for sale or keep that others 
may sell;" and the House agree to the same. 

That the House recede from its amendment numbered 3, and agree to the clause 
proposed to be stricken out, with an amendment as follows: At the end of the sec- 
tion insert: "In all cases in w^hich it appears that the person or party claiming said 
goods had, when he received the same, knowledge or notice that the same were such 
goods as this section describes;" and the Senate agree to the same. 

That the Senate recede from its disagreement to the amendment of the House 
numbered 6, and agree to the same, with an amendment, so that the clause wnll read 
as follows: "With intent that the same be used for the purpose of deception and 
fraud;" and the House agree to the same. 



FOETY-FOURTH CONGRESS. 407 

That the Senate recede from its disagreement to the amendment of the House 
numbered 7, and agree to the same, with an amendment, so that the clause will read 
aa follows: "With intent that the same be used for the purpose of deception and 
fraud;" and the House agree to the same. 

That the House recede from its amendment numbered 9, and agree to the section 
wherein said amendment occurs, amending said section so as to stand as follows: 
"That any person who shall, with intent to defraud any person or persons, know- 
ingly and willfully aid or abet in the violation of any of the provisions of this act, 
shall upon conviction thereof be punished as prescribed in the .first section cl this 
act; and any person who shall commit any of the offenses specified in this act shall 
be deemed to have committed a crime, and may be proceeded against by arrest, 
indictment, and trial, as in other criminal cases, and the district courts of the United 
States shall have cognizance and jurisdiction to enforce this act;" and the Senate 
agree to the same. 

J. H. Bagley, Jr., 

W. Hartzell, 

E. S. Sampson, 

Managers on the part of the House. 

ROSCOE CONKLING, 

Frederick T. Frelinghuysen, 
J. W. Stevenson, 

Managers on the part of the Senate. 

The question w^m upon agreeing to the report of the committee of 
conference. 

Mr. Hewitt of New York. I would like to inquire of the Chair 
whether it is in order to move to postpone the consideration of this 
conference report until the next session of Congress ? 

Mr. Randall. The conference report can be voted down, in which 
case the bill would be lost; but it might be revived again. 

Mr. Garfield. To vote down the conference report would kill the 
bill. To postpone the report until the next session does not neces- 
sarilj^ kill the bill. 

Mr. Heavitt of New York. I desire to say a very few words in 
relation to this bill. 

The Speaker ^to temjpore. The gentleman from New York sub- 
mitting the report [Mr. J. H. Bagley] is entitled to the floor. 

Mr. J. H. Bagley. I desire to say in reference to this report that 
we have had a full and free conference; and although there may be 
some features of this report which are objectionable to some gentle- 
men, yet we have done, after mature consideration, the best we could, 
and I think we have put the bill in a very acceptable shape. I do not 
know that I have anj^ explanations to make in regard to this report. 
My colleague on the committee, the gentleman from Iowa [Mr. Samp- 
son], can perhaps give a better explanation of it than I can. 

Mr. Hewitt of New York. Will the gentleman yield to me for a 
moment ? 

Mr. J. H. Bagley. I will first yield to my colleague on the com- 
mittee. 

Mr. Sampson. I do not desire to take up any of the time of the 
House in discussing this report, unless it may appear that there are 
some sound reasons why it should not be adopted. If the gentleman 
from New York [Mr. Hewitt] has any objection to this report, I am 
perfectly willing to hear his objection, and then I ma}" desire to reply 
to him. 

Mr. Hewitt of New York. My attention was called to this bill 
early in the session by a very large association in the city of New 

S, Doc. 20 27* 



408 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

York, known as the Junk Dealers' Association. I was surprised to 
learn that in the city of New York there were 2,000 dealers in cast-off 
articles. I was asked to give some attention to this matter, and I tried 
to do so. 

Now, I confess before this House, to my humiliation, that this bill 
actually passed both Houses and went to this conference committee 
while 1 was sitting in my seat, and I was utterly ignorant of the fact. 
I immediately called the attention of members of the House and of the 
Senate to the character of the bill. I had it examined by competent 
legal authority, and I have been assured that the bill can not be exe- 
cuted without subjecting a large class of humble and respectable peo- 
ple to the very greatest hardships. 

I have no doubt this bill contains many meritorious features in regard 
to trademarks, and that some legislation is required for the better pro- 
tection of trademarks. But it seems to me it will be a mistake to carry 
into operation any such legislation without giving proper attention to 
the rights and interests of other portions of the community who have 
not been represented before the committee, as the owners of trade- 
marks have, by competent counsel. 

The association of which I have spoken complained that they had 
had no opportunity to be heard before the committee of this House. 
They seem to have addressed a communication to the committee of the 
Senate, and that communication, I understand, was acknowledged, 
although I was informed by the president of the association that it had 
not been acknowledged. 

I do not desire to defeat this bill; I desire to see it perfected. But 
it seems to me that to pass it under this report of the committee of 
conference would be doing very great injustice. Hence my inquiry 
of the Chair if it was in order to move to postpone the further consid- 
eration of this report until the next session of Congress, so that all 
parties interested might be heard and an opportunity given to secure 
proper legislation. 

Let me explain to this House very briefly the nature of one provi- 
sion of this bill. A poor man is passing along the street with a bottle 
under his arm; the bottle is marked "Piper Heidsieck," or some other 
respectable name. Now, if there be a deputy marshal who is prepared 
to swear that this man has this bottle with intent to defraud, the man 
can be arrested and carried before a United States commissioner. In 
many portions of the country the United States commissioner can not 
be found within 50 or 100 miles. The man can be put under arrest and 
required to give biil, and perhaps all the property he has in the world 
is the bottle under his arm. Then comes the bill of fees for the mar- 
shal, for the commissioner, and for everybody else. I am assured by 
gentlemen here, and no doubt lawyers on this floor understand it much 
better than 1 do, that in different parts of this country there are dep- 
uty marshals and commissioners who are engaged in hunting up viola- 
tions of the revenue laws for the express purpose of securing the fees. 

The operations of this bill extend to almost every known class of 
cast-off articles— bottles, boxes, cigar boxes, medicine vials, anything 
that any man may happen to cast aside and a poor fellow may pick up. 
If somebody will make the necessary affidavit against him, he may be 
arrested and put in any jail and kept there. 

It is true that a provision requiring the showing of an intent to 
(iefraud (which was not in the original draft of this bill) has been 



FORTY-FOURTH CONGRESS. 409 

inserted upon careful examination by the committee; and 1 thank them 
for it. But it seems to me that the whole measure is too full of dan- 
ger to be passed at this late hour of the session without more thorough 
investigation. 1 appeal to my legal friends here — for the}^ are the 
ones who ought to guard the interests of these poorer members of 
society, who are unable to protect themselves — I ask from them a 
careful examination of the provisions of this bill in order that they 
ma}" sa}" whether it is such legislation as an enlightened Congress 
ought to adopt. If, therefore, it be in order, 1 shall move to postpone 
the further consideration of this subject until the next session of Con- 
gress, in the hope that then a proper measure may be perfected which 
will satisfy all classes of the community. 

Mr. Sampson. Mr. Speaker, the first objection which the gentleman 
from New York [Mr. Hewitt] seems to make to this bill is that it has 
not been carefulty considered; that it is hasty legislation. As I under- 
stand the history of this measure, it was introduced into the Senate 
perhaps some three months ago, was referred to the Committee on the 
Judiciary of that body, and after careful consideration by some of the 
ablest law3^ers upon that committee was reported back to the Senate, 
and after discussion sent to this House. The gentleman from New 
York [Mr. Cox] called up the bill here and asked unanimous consent 
that it might be considered and passed immediately. I called his 
attention to the fact that the bill embraced some objectionable features 
under which innocent men might be punished. I was anxious to have 
inserted in the bill a provision requiring proof of intent to defraud — 
requiring the Government to prove affirmatively in every case that 
this cast-ofl' property to which the gentleman from New York [Mr. 
Hewitt] has referred was held with intent to defraud. Upon that 
suggestion of mine the gentleman consented to the reference of the 
bill to the Committee on Patents. It was carefully considered by that 
committee, upon which there are a number of legal gentlemen, and 
the provision requiring proof of intent to defraud was inserted in 
every case where it appeared necessary for the protection of innocent 
parties. After full consideration by that committee the bill came 
back to the House with amendments, and was here discussed. Gen- 
tlemen will remember that there was quite a struggle to obtain the 
floor for the purpose of having those amendments considered. The 
bill was discussed, the reasons for the amendments given, and the bill 
was passed as amended without a dissenting voice. Upon its return 
to the Senate that body refused to concur in the amendments of the 
House and a conference committee was appointed. 

The gentleman from New York [Mr. Hewitt] has complained that a 
friend or constituent of his has been denied the opportunity to make 
a proper showing before the committee. I believe he has reference to 
the president of the Junk Association of New York City, an associa- 
tion numbering some 2,000 or 3,000 members. Now, the fact is that 
that gentleman has been in communication with a member of the 
Judiciar}^ Committee of the Senate ever since the early part of June. 
He then opened a correspondence, and letters have passed back and 
forth between those gentlemen. His case as made out by letter was 
submitted to the Judiciary Committee of the Senate, and was fully 
considered. His opposition to the measure had relation to this very 
provision relating to empty bottles. Now, in order to show the House 



410 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

that this is not an objectionable feature, I desire to read the section 
relating to that subject: 

That any person, who shall, with intent to injure or defraud the owner of any- 
trade mark, or any other person lawfully entitled to use or protect the same, buy, 
sell, offer for sale, deal in, or have in his possession any used or empty box, envelope, 
wrapper, case, bottle, or other package to which is affixed, so that the same may be 
obliterated without substantial injmy to such box or other thing aforesaid, any trade 
mark, registered pursuant to the statutes of the United States, not so defaced, erased, 
obliterated and destroyed as to prevent its fraudulent use, shall, on conviction 
thereof, be punished as described in the first section of this act. 

Now, if the trademark is a part of the bottle — if it is blown into the 
bottle so that it can not be erased— there is no offense; but if the 
trademark is a paper label stuck upon the bottle, so that it must be 
rubbed off* unless the person having it in his possession takes pains to 
keep it there, then it will be some evidence, perhaps, that he intends 
to violate the law. If he can not wash the bottle without washing off 
the label, unless he takes especial pains to keep it on, this may be evi- 
dence of intent to defraud. But this intent must appear by some 
affirmative evidence. The burden of proof rests upon the Govern- 
ment. If a man has in his possession bottles with trademark labels 
upon them, all he has to do to avoid the very appearance of evil is to 
wash off the labels. It seems to me it can not be claimed in reason 
that there is any hardship in the proAdsions of this bill as now amended. 

The gentleman from New York (Mr. Hewitt) says that an innocent 
man may be arrested for having in his possession a bottle with a coun- 
terfeit trademark. So a man may be walking through the streets 
with a half dollar in his pocket which some man may claim is counter- 
feit, and he may be arrested upon the charge of having counterfeit 
money in his possession. There is the same possibilit}^ of hardship in 
ever}^ case where a man ma}^ be alleged to have any counterfeit prop- 
erty in his possession. We have, however, been very careful to guard 
all these sections so as to throw upon the Government the burden of 
proving the intent to defraud. In fact, it seemed to be the opinion of 
some gentlemen interested in this bill that in this manner it nad been 
so diluted as to be of little value for the punishment of those who may 
deal in counterfeit trademarks. I think that certainly if we are going 
to pass any bill on this subject this is in as mild a form as any gentle- 
man could wish. We have sought to render it impossible that any 
innocent man shall be punished. 

Mr. Heavett, of New York. Will the gentleman state the penalty ? 

Mr. Sampson. The maximum punishment is a fine of $2,000 and 
imprisonment for two years, but the penalty may be as light as 
imprisonment for one minute and a fine of 1 cent, as the whole 
matter rests within the discretion of the court. A large latitude in 
respect to the penalty is intentional^ given. If a man is found hav- 
ing in his possession but a single package or bottle bearing a counter- 
feit trademark, and if this is his onl}^ offense, the court may make the 
penalt}^ extremel}^ light. 

Although the gentleman from New York seems now so apprehen- 
sive in regard to punishments, he introduced in this House and had 
referred to the Committee on Patents a bill in which the punishment 
for the use of counterfeit trademarks was fixed at imprisonment for 
ten years and a fine not exceeding |5,000. Under this bill the pun- 
ishment can not exceed imprisonment for two years and a tine of 



FOJRTY-FOUETH CONGKESS. 411 

$2,000, while it ma}^ be as much less as the court within its discretion 
ma}^ deem proper. 

Mr. Hewitt, of New York. The gentleman from Iowa [Mr. Samp- 
son] states that I introduced bills for the protection of trademarks 
containing severer penalties than those in the bill under discussion. 
That is true; but he ought to remember that gentlemen often intro- 
duce bills at the request of other parties, for the provisions of which 
they do not hold themselves responsible. The bills referred to were 
handed to me by respectable members of the bar, and I introduced 
them without giving sluj sanction to the provisions of the bills myself. 

Mr. J. H. Bagley. I now yield the floor to the gentleman from 
Michigan. 

Mr. Conger. Mr. Speaker, when this bill, which was passed in the 
Senate, was referred to the Committee on Patents it seemed to me to 
be a bill solely in the interest of those to whom by law privileges had 
been given in connection with trademarks; that its provisions were so 
severe and the penalty so high, the imprisonment so long necessarily, 
with no requirement that fraudulent intent should be alleged and 
proved, that I was very much opposed to it, as were other members 
of the Committee on Patents. It was considered for a long time b}^ 
that committee very carefully. I think if the bill has been agreed 
upon substantially by the conference committee as it finally passed the 
House the interests of the people are fairly protected, and the inter- 
ests of those who have rights under the trademark law are equally 
well protected. I am not certain, as I -have not looked into it, 
whether this contains the section which makes it purely a criminal 
offense and which was struck out b}" the House. 

Mr. Sampson. That was not restored in the Senate. 

Mr. Congee. If that were restored by this conference committee, I 
should myself oppose the passage of this bill now or at any time, and 
I should ask gentlemen of the House to oppose it upon what I believe 
to be abundantly sufficient ground. But the gentleman who has charge 
of the bill informs me that the section stricken out by the committee 
of conference has not been restored. If it has not, and sufficient guard 
against abuse of prosecutions is inserted by the Committee on Patents 
in the Senate biU — if those are retained — I can see no real objection to 
its passage. * * * 

The report was rejected. 

[Senate, first session, August 11, 1876, Cong. Record, vol. 4. part 6, p. 5453.] 
TRADEMARK GOODS. 

Mr. Conkling. Mr. President, being compelled to be absent from 
the Senate in the morning, I ask unanimous consent to take up a mes- 
sage from the House which lies on the table. 

The President ^r6> tera^pore. The Chair hears no objection. 

Mr. Edmunds. Subject to a call for the regular order. 

The President pro tempore laid before the Senate the action of the 
House of Representatives disagreeing to the report of the committee 
of conference on the disagreeing votes of the two Houses on the bill 
(S. 846) to punish the counterfeiting of trademark goods and the sale 
or dealing in counterfeit trademark goods. 

Mr. Conkling. It is so late in the session that I think it hardly 
worth while to ask another conference with the House, although it 



412 REVISION OF STATUTES RELATHSTG TO PATENTS, ETC. 

differs radical!}'' with the Senate and the Judiciary Committee of the 
Senate touching this bill; but as the HouBe has left it somewhat better 
than no bill at all, after consulting with the members of the Judiciar}^ 
Committee, I move that the Senate recede from its vote disagreeing to 
the House amendments and let the House have its way on the bill. 

The Pkesident pro tempore. The Senator from New York moves 
that the "Senate recede from its disagreement to the amendments of 
the House. 

The motion was agreed to. 

[Senate, first session, August 15, 1876, Cong. Record, vol. 4, part 6, p. 5657.] 
PRESIDENTIAL APPROVALS. 

A message from the President of the United States, by Mr. U. S. 
Grant, jr., his secretary, announced that the President had yesterday 
approved and signed the following acts: 

An act (S. 846) to punish the counterfeiting of trademark goods and 
the sale or dealing in of counterfeit trademark goods. '" * * 

The bill as passed is as follows: 

Chap. 274.— An^act to punish the counterfeiting of trade-mark goods and the sale or dealing in of 

counterfeit trade-mark goods.. 

Be it enacted, etc. [Section 1], That every person who shall, with intent to defraud, 
deal in or sell, or keep or offer for sale, or cause or procure the sale of, any goods of 
substantially the same descriptive properties as those referred to in the registration 
of any trade-mark, pursuant to the statutes of the United States, to which, or to the 
package in which the same are put up, is fraudulently affixed said trade-mark, or any 
colorable imitation thereof, calculated to deceive the public, knowing the same to be 
counterfeit or not the genuine goods referred to in said registration, shall, on convic- 
tion thereof, be punished by fine not exceeding one thousand dollars, or imprison- 
ment not more than two years, or both such fine and imprisonment. 

Sec. 2. That every person who fraudulently affixes, or causes or procures to be 
fraudulently affixed, any trade-mark registered pursuant to the statutes of the 
United States, or any colorable imitation thereof, calculated to deceive the public, to 
any goods, of substantially the same descriptive properties as those referred to in said 
registration, or to the package in which they are put up, knowing the same to be 
counterfeit, or not the genuine goods referred to in said registration, shall, on con- 
viction thereof, be punished as prescribed in the first section of this act. 

Sec. 3. That every person who fraudulently fills, or causes or procures to be 
fraudulently filled, any package to which is affixed any trade-mark, registered pur- 
suant to the statutes of the United States, or any colorable imitation thereof, calcu- 
lated to deceive the public, with any goods of substantially the same descriptive 
properties as those referred to in said registration, knowing the same to be counter- 
feit, or not the genuine goods referred to in said registration, shall, on conviction 
thereof, be punished as prescribed in the first section of this act. 

Sec. 4. That any person or persons who shall, with intent to defraud any person or 
persons, knowmgly and willfully cast, engrave, or manufacture, or have in his, her, 
'or their possession, or buy, sell, offer for sale, or deal in, any die or dies, plate or 
plates, brand or brands, engraving or engravings, on wood, stone, metal, or_ other 
substance, moulds, or any false representation, likeness, copy, or colorable imitation 
of any die, plate, brand, engraving, or mould of any private label, brand, stamp, 
wrapper, engraving on paper or other substance, or trade-mark, registered pursuant 
to the statutes of the United States, shall, upon conviction thereof, be punished as 
prescribed in the first section of this act. 

Sec. 5. That any person or persons who shall, with intent to defraud any person 
or persons, knowingly and willfully make, forge, or counterfeit, or have in his, her, 
or their possession, or buy, sell, offer for sale, or deal in, any representation, likeness, 
similitude, copy, or colorable imitation of any private label, brand, stamp, wrapper, 
engraving, mould, or trade-mark, registered pursuant to the statutes of the United 
States, shall, upon conviction thereof, be punished as prescribed in the first section 
of this act. 

Sec 6. That any person who shall, with intent to injure or defraud the owner of 
any trade-mark, or any other person lawfully entitled to use or protect the same, buy. 



FORTY-FOURTH COKGRESB. 413 

sell, offer for sale, deal in or have in his possession any nsed or empty box, envelope, 
wrapper, case, bottle, or other package to which is affixed, so that the same may be 
obliterated without substantial injury to such box or other thing aforesaid, any 
trade-mark, registered pursuant to the statutes of the United States, not so defaced, 
erased, obliterated, and destroyed as to prevent its fraudulent use, shall, on conviction 
thereof, be punished as prescribed in the first section of this act. 

Sec. 7. That if the owner of any trade-mark, registered pursuant to the statutes of 
the United States, or his agent, make oath, in writing, that he has reason to believe, 
and does believe, that any counterfeit dies, plates, brands, engravings on wood, 
stone, metal, or other substance, or moulds of his said registered trade-mark, are in 
the possession of any person, with intent to use the same for the purpose of decep- 
tion and fraud, or make such oaths that any counterfeits or colorable imitations of 
his said trade-mark, label, brand, stamp, wrapper, engravings on paper or other sub- 
stance, or empty box, envelope, wrapper, case, bottle, or other package, to which is 
affixed said registered trade-mark not so defaced, erased, obliterated, and destroyed as to 
prevent its fraudulent use, are in the possession of any person, with intent to use 
the same for the purpose of deception and fraud, then the several judges of the cir- 
cuit and district courts of the United States and the commissioners of the circuit 
courts may, within their respective jurisdictions, proceed under the law relating to 
search warrants, and may issue a search warrant authorizing and directing the mar- 
shal of the United States for the proper district to search for and seize all said coun- 
terfeit dies, plates, brands, engravings on wood, stone, metal, or other substance, 
moulds, and said counterfeit trade-marks, colorable imitations thereof, labels, brands, 
stamps, wrappers, engravings on paper, or other substance, and said empty boxes, 
envelopes, wrappers, cases, bottles, or other packages that can be found; and upon 
satisfactory proof being made that said counterfeit dies, plates, brands, engravings on 
wood, stone, metal, or other substance, moulds, counterfeit trade-marks, colorable 
imitations thereof, labels, brands, stamps, wrappers, engravings on paper or other 
substance, empty boxes, envelopes, wrappers, cases, bottles or other packages, are 
to be used by the holder or owner for the purposes of deception and fraud, that any 
of said judges shall have full power to order all said counterfeit dies, plates, brands, 
engravings on wood, stone, metal, or other substance, moulds, counterfeit trade- 
marks, colorable imitations thereof, labels, brands, stamps, wrappers, engravings on 
paper or other substance, empty boxes, envelopes, wrappers, cases, bottles, or other 
packages, to be publicly destroyed. 

Sec. 8. That any person who shall, with intent to defraud any person or persons, 
knowingly and willfully aid or abet in the violation of any of the provisions of this act 
shall, upon conviction thereof, be punished by a fine not exceeding five hundred dol- 
lars, or imprisonment not more than one year, or i^oth such fine and imprisonment. 



The act of August 14, 1876, was declared unconstitutional by the 
Supreme Court of the United States, the court writing- the following 
opinion : 

(100 U. S., 82.) 

Mr. Justice Miller delivered the opinion of the court. 

The three cases whose titles stand at th'B head of this opinion are criminal prose- 
cutions for violations of what is known as the trade-mark legislation of Congress. 
The first two are indictments in the southern district of New York, and the last is an 
information in the southern district of Ohio. In all of them the judges of the cir- 
cuit courts in which they are pending have certified to a difference of opinion on 
what is substantially the same question, namely: Are the acts of Congress on the 
subject of trade-marks founded on any rightful authority in the Constitution of the 
United States? 

The entire legislation of Congress in regard to trade-marks is of very recent origin. 
It is first seen in sections 77 to 84, inclusive, of the act of July 8, 1870, entitled "An 
act to revise, consolidate, and amend the statutes relating to patents and copyrights " 
(16 Stat., 198). The part of this act relating to trade-marks is embodied in chapter 
2, title 60, sections 4937 to 4947, of the Revised Statutes. 

It is sufficient at present to say that they provide for the registration in the Patent 
Office of any device in the nature of a trade-mark to which any person has by usage 
established an exclusive right, or which the person so registering intends to appro- 
priate by that act to his exclusive use; and they make the wrongful use of a trade- 
mark, so registered, by any other person, without the owner's permission, a cause of 
action in a civil suit for damages. Six years later we have the act of August 14, 1876 



414 REVISIO]^ OF STATUTES RELATING TO PATENTS, ETC. 

(19 Stat., 141), punishing by fine and imprisonment the fraudulent use, sale, and 
counterfeiting of trade-marks registered in pursuance of the statutes of the United 
States, on which the informations and indictments are founded in the cases before us. 

The right to adopt and use a symbol or a device to distinguish the goods or prop- 
erty made or sold by the person whose mark it is, to the exclusion of use by all other 
persons, has been long recognized by the common law and the chancery courts of 
England and of this country, and by the statutes of some of the States. It is a prop- 
erty right for the violation of which damages may be recovered in an action at law, 
and the continued violation of it will be enjoined by a court of equity, with com- 
pensation for past infringement. This exclusive right was not created by the act of 
Congress, and does not now depend upon it for its enforcement. The whole system 
of trade-mark property and the civil remedies for its protection existed long anterior 
to that act, and have remained in full force since its passage. 

These propositions are so well understood as to require neither the citation of 
authorities nor an elaborate argument to prove them. 

As the property in trade-marks and the right to their exclusive use rest on the 
laws of the States, and, like the great body of the rights of person and of property, 
depend on them for security and protection, the power of Congi-ess to legislate on 
the subject, to establish the conditions on which these rights shall be enjoyed and 
exercised, the period of their duration, and the legal remedies for their enforcement, 
if such power exist at all, must be found in the Constitution of the United States, 
which is the source of all the powers that Congress can lawfully exercise. 

In the argument of these cases this seems to be conceded, and the advocates for the 
validity of the acts of Congress on this subject point to two clauses of the Constitu- 
tion, in one or in both of which, as they assert, sufficient warrant may be found for 
this legislation. 

The first of these is the eighth clause of section 8 of the first article. That section, 
manifestly intended to be an enumeration of the powers expressly granted to Con- 
gress, and closing with the declaration of a rule for the ascertainment of such powers 
as are necessary by way of implication to carry into efficient operation those expressly 
given, authorizes Congress, by the clause referred to, ''to promote the progress of 
science and useful arts, by securing for limited times to authors and inventors the 
exclusive right to their respective writings and discoveries." 

As the first and only attempt by Congress to regulate the right of trade-marks is to 
be found in the act of July 8, 1870, to which we have referred, entitled "An act 
to revise, consolidate, and amend the statutes relating to patents and copyrights,'^ 
terms which have long since become technical, as referring, the one to inventions 
and the other to the writings of authors, it is a reasonable inference that this part of. 
the statute also was, in the opinion of Congress, an exercise of the power found in that 
clause of the Constitution. It may also be safely assumed that until a critical exami- 
nation of the subject in the courts became necessary, it was mainly if not wholly to 
this clause that the advocates of the law looked for its support. 

Any attempt, however, to identify the essential characteristics of a trade-mark 
with inventions and discoveries in the arts and sciences, or with the writings of 
authors, will show that the effort is surrounded with insurmountable difficulties. 

The ordinary trade-mark has no necessary relation to invention or discovery. 
The trade-mark recognized by the common law is generally the growth of a con- 
siderable period of use, rather than a sudden invention. It is often the result 
of accident rather than design, and when under the act of Congress it is sought 
to establish it by registration, neither originality, invention, discovery, science, nor 
art is in any way essential to the right conferred by that act. If we should endeavor 
to classify it under the head of writings of authors, the objections are equally strong. 
In this, as in regard to inventions, originality is required. And while the word 
writings may be liberally construed, as it has been, to include original designs for 
engravings, prints, etc. , it is only such as are original, and are founded in the creative 
powers of the mind. The writings which are to be protected are the fruits of intellec- 
tual labor, embodied in the form of books, prints, engravings, and the like. The 
trade-mark may be, and generally is, the adoption of something already in existence 
:is the distinctive symbol of the party using it. At common law the exclusive right 
to it grows out of its use, and not its mere adoption. By the act of Congress this 
I xclusive right attaches upon registration. But in neither case does it depend upon 
i.ovelty, invention, discovery, or any work of the brain. It requires no fancy or 
imagination, no genius, no laborious thought. It is simply founded on priority of 
:> ppropriation. We look in vain in the statute for any other qualification or condition. 
If the symbol, however plain, simple, old, or well known, has been first appropriated 
by the claimant as his distinctive trade-mark, he may, by registration, secure the 
right to its exclusive use. While such legislation may be ^ judicious aid to the com- 
mon law on the subject of trade-marks, and may be within the competency of legisla- 
tures whose general powers embrace that class of subjects, we are unable to see any 



FORTY -FOURTH CONGRESS. 415 

such power in the constitutional provision concerning authors and inventors and 
their writings and discoveries. 

The other clause of the Constitution supposed to confer the requisite authority on 
Congress is the third of the same section, which, read in connection with the granting 
clause, is as follows: 

"The Congress shall have power to regulate Commerce with foreign Nations, and 
among the several States, and with the Indian Tribes." 

The argument is that the use of a trade-mark— that which alone gives it any 
value — is to identify a particular class or quality of goods as the manufacture, prod- 
uce, or property of the person who puts them in the general market for sale; that 
the sale of the article so distinguished is commerce; that the trade-mark is, there- 
fore, a useful and valuable aid or instrument of commerce, and its regulation by 
virtue of the clause belongs to Congress, and that the act in question is a lawful 
exercise of this power. 

Every species of property which is the subject of commerce, or which is used or 
even essential in commerce, is not brought by this clause within the control of Con- 
gress. The barrels and casks, the bottles and boxes, in which alone certain articles 
of commerce are kept for safety and by which their contents are transferred from 
the seller to the buyer, do not thereby become subjects of Congressional legislation 
more than other property. ( Nathan v. Louisiana, 8 How. , 73. ) In Paul v. Virginia 
(8 Wall., 168) this court held that a policy of insurance made by a corporation of 
one State on property situated in another was not an article of commerce, and did 
not come within the purview of the clause we are considering. " They are not, " 
says the court, "commodities to be shipped or forwarded from one State to another, 
and then put up for sale." On the other hand, in Almy v. State of California (24 
How., 169) it was held that a stamp duty imposed by the legislature of California 
on bills of lading for gold and silver transported from any place in that State to 
another out of the State, was forbidden by the Constitution of the United States, 
because such instruments being a necessity to the transaction of commerce, the duty 
was a tax upon exports. 

The question, therefore, whether the trade-mark bears such a relation to commerce 
in general terms as to bring it within Congressional control, when used or applied to 
the classes of commerce which fall within that control, is one which, in the present 
case, we propose to leave undecided. We adopt this course because when this court 
is called on in the course of the administration of the law to consider whether an 
act of Congress or of any other department of the Government is within the consti- 
tutional authority of that department, a due respect for a coordinate branch of the 
Government requires that we shall decide that it has transcended its powers only 
when that is so plain that we can not avoid the duty. 

In such cases it is manifestly the dictate of wisdom and judicial propriety to decide 
no more than is necessary to the case in hand. That such has been the uniform 
course of this court in regard to statutes passed by Congress will readily appear to 
anyone who will consider the vast amount of argument presented to us assailing them 
as unconstitutional, and he will count, as he may do on his fingers, the instances in 
which this court has declared an act of Congress void for want of constitutional 
power. 

Governed by this view of our duty, we proceed to remark that a glance at the 
commerce clause of the Constitution discloses at once what has been often the subject 
of comment in this court and out of it, that the power of regulation there conferred 
on Congress is limited to commerce with foreign nations, commerce among the States, 
and commerce with the Indian tribes. While bearing in mind the liberal construc- 
tion that commerce with foreign nations means commerce between citizens of the 
United States and citizens and subjects of foreign nations, and commerce among the 
States means commerce between the individual citizens of different States, there still 
remains a very large amount of commerce, perhaps the largest, which, being traffic 
between citizens of the same State, is beyond the control of Congress. 

When, therefore, Congress undertakes to enact a law which can only be valid as a 
regulation of commerce, it is reasonable to expect to find on the face of the law, or 
from its essential nature, that it is a regulation of commerce with foreign nations, or 
among the several States, or with the Indian tribes. If not so limited, it is in excess 
of the power of Congress. If its main purpose be to establish a regulation applicable 
to all trade, to commerce at all points, especially if it be apparent that it is designed 
to govern the commerce wholl}^ between citizens of the same State, it is obviously 
the exercise of a power not confided to Congress. 

We find no recognition of this principle in the chapter on trade-marks in the 
Revised Statutes. We would naturally look for this in the description of the class 
of persons who are entitled to register a trade-mark, or in reference to the goods to 
which it should be applied. If, for instance, the statute described persons engaged 
in a commerce between the different States and related to the use of trade-marks in 



416- 

such commerce, it would be evident that Congress believed it was acting under the 
clause of the Constitution which authorizes it to regulate commerce among the States. 
So if, when the trade-mark has been registered. Congress had protected its use on 
goods sold by a citizen of one State to another, or by a citizen of a foreign State to a 
citizen of the United States, it would be seen that Congress was at least intending to 
exercise the power of regulation conferred by that clause of the Constitution. But 
no such idea is found or suggested in this statute. Its language is: "Any person or 
firm domiciled in the United States, and any corporation created by the United States 
or of any State or Territory thereof," or any person residing in 'a foreign country 
which by treaty or convention affords similar privileges to our citizens, may by reg- 
istration obtain protection for his trade-mark. Here is no requirement that such 
person shall be engaged in the kind of commerce which Congress is authorized to 
regulate. It is a general declaration that anybody in the United States, and any- 
body in any other country which permits us to do the like, may, by registering a 
trade-mark, have it fully protected. So, while the person registering' is required to 
furnish "a statement of the class of merchandise, and the particular description of 
the goods comprised in such class, by which the trade-mark has been or is intended 
to be appropriated," there is no hint that the goods are to be transported from one 
State to another, or between the United States and foreign countries. Section 4939 is 
intended to impose some restriction upon the Commissioner of Patents in the matter 
of registration, but no limitation is suggested in regard to persons or property engaged 
in the different classes of commerce mentioned in the Constitution. The remedies 
provided by the act when the right of the owner of the registered trade-mark is 
infringed, are not confined to the case of a trade-mark used in foreign or interstate 
commerce. 

It is therefore manifest that no such distinction is found in the act, but that its 
broad purpose was to establish a universal system of trade-mark registration for the 
benefit of all who had already used a trade-mark, or who wished to adopt one in the 
future, without regard to the character of the trade to which it was to be applied or 
the residence of the owner, with the solitary exception that those who resided in 
foreign coimtries which extended no such privileges to us were excluded from them 
here. 

It has been suggested that if Congress has power to regulate trade-marks used in 
commerce with foreign nations and among the several States these statutes shall be 
held valid in that class of cases, if no further. To this there are two objections: First, 
the indictments in these cases do not show that the trade-marks which are wrong- 
fully used were trade-marks used in that kind of commerce. Secondly, while it may 
be true that when one part of a statute is valid and constitutional and another part 
is unconstitutional and void the court may enforce the valid part where they are dis- 
tinctly separable so that each can stand alone, it is not within the judicial province 
to give to the words used by Congress a narrower meaning than they are manifestly 
intended to bear in order that crimes may be punished which are not described in 
language that brings them within the constitutional power of that body. This pre- 
cise point was decided in United States v. Eeese (92 U. S., 214). In that case Con- 
gress had passed a statute punishing election officers who should refuse to any person 
lawfully entitled to do so the right to cast his vote at an election. This court was of 
the opinion that, as regarded the section of the statute then under consideration, 
Congress could only punish such denial when it was on account of race, color, or 
previous condition of servitude. 

It was urged, however, that the general description of the offense included the 
more limited one, and that the section was valid where such was in fact the cause of 
denial. But the court said, through the Chief Justice: 

' ' We are not able to reject a part which is unconstitutional and retain the remainder, 
because it is not possible to separate that which is constitutional, if there be any such, 
from that which is not. The proposed effect is not to be attained by striking out or 
disregarding words that are in the section, but by inserting those that are not there 
now. Each of the sections must stand as a whole or fall together. The language 
is plain. There is no room for construction, unless it be as to the effect of the Con- 
stitution. The question, then, to be determined is whether we can introduce words 
of limitation into a penal statute so as to make it specific, when, as expressed, it is 
general only. * * * To limit this statute in the manner now asked for would be 
to make a new law, not to enforce an old one. This is no part of our duty." 

If we should, in the case before us, undertake to make by judicial construction a 
law which Congress did not make, it is quite probable we should do what, if the 
matter were now before that body, it would be unwilling to do, namely, make a 
trade-mark law which is only partial in its operation, and Avhich would complicate 
the rights which parties would hold — in some instances under the act of Congress, 
and in others under State law. (Coolev, Const. Lim. 178, 179; Commonwealth v. 
Hitchings, 5 Gray (Mass.), 482.) 



FORTY-FOtJKTH CONGRESS. 41 T 

In what we have here said we wish to be understood as leaving untouched the 
whole question of the treaty-making power over trade-marks and of the duty of 
Congress to pass any laws necessary to carry treaties into effect. 

While we have, in our references in this opinion to the trade-mark legislation of 
Congress, had mainly in view the act of 1870 and the civil remedy which that act 
provides, it was because the criminal offenses described in the act of 1876 are, by 
their express terms, solely referable to frauds, counterfeits, and unlawful use of trade- 
marks which were registered under the provisions of the former act. If that act is 
unconstitutional, so that the registration under it confers no lawful right, then the 
criminal enactment intended to protect that right falls with it. 

The questions in each of these cases being an inquiry whether these statutes can 
be upheld in whole or in part as valid and constitutional must be answered in the 
negative; and it will be 

So certified to the proper circuit courts. 



FORTY-FIFTH CONGRESS. 

H. R. 2524.— A bill to amend section 4937 of the Eevised Statutes, in relation to 
trademarks. Introduced by Hon. James F. Briggs, of New Hamp- 
shire, January 21, 1878. Referred to the Committee on Patents. 
Not reported. 

[House of Representatives, second session. January 21, 1878, Cong. Record, vol. 7, part 1, p. 441.] 

TRADEMARKS. 

Mr. Briggs introduced a bill (H. R. 2524) to amend section 4937 of 
the Revised Statutes, in relation to trademarks; which was read a first 
and second time, referred to the Committee on Patents, and ordered 
to be printed. 

FORTY-SIXTH CONGRESS. 

Four bills and two resolutions were introduced in the House of 
Representatives in this Congress, and one bill in the Senate. 

H. Ees. 125. — A joint resolution proposing an amendment to the Constitution of the 
United States giving Congress power to grant and protect trademarks. 
Introduced by Hon. Moses A. McCoid, of Iowa, December 2, 1879. 
Referred to the Committee on Manufactures. H. R. 5088 reported as 
a substitute. 

[House of Representatives, second session, December 2, 1879, Cong. Record, vol. 10, part 1, p. 17.] 



AMENDMENT TO CONSTITUTION. 

Mr. McCoid, by unanimous consent, introduced a joint resolution 
(H. Res. 125) proposing an amendment to the Constitution of the United 
States, giving Congress power to grant and protect trademarks; which 
was read a first and second time, referred to the Committee on Manu- 
factures, and ordered to be printed. 

[House of Representatives, second session, December 11, 1879, Cong. Record, vol. 10, parti, p. 78.] 
REGULATION OF TRADEMARKS. 

Mr. McCoiD. I ask, by unanimous consent, to report back from the 
Committee on Manufactures a joint resolution (H. Res. 125) proposing 
an amendment to the Constitution of the United States; and I move 
that the accompanying report be printed and recommitted with the 
joint resolution. 

The Speaker. The gentleman from Iowa gives notice, so the House 
may be apprised of the fact, that he proposes to bring back the joint reso- 
lution by a motion to reconsider. That requires unanimous consent. 



418 

Mr. McCoiD. The conunittee wish to have leave to report at any 
time. 
Mr. Fernando Wood. What is the subject-matter? 
The Speaker. The joint resolution will be read. 
The Clerk read as follows: 

Resolved, &c., That the following amendment to the Constitution of the United 
States be proposed to the Legislatures of the several States: 

ARTICLE — . 

Section 1. Congress, for promotion of trade and manufactures, and to carry into 
effect international treaties, shall have power to grant, protect, and regulate the 
exclusive right to adopt and use trade-marks. 

That this amendment shall be valid when ratified by the Legislatures of three- 
fourths of the States. 

Mr. Fernando Wood. I object. 

The Speaker. Does the gentleman object to receiving the report 
and ordering its printing and recommittal? 

Mr. Fernando Wood. No; but I do object to this question being 
brought back under a motion to reconsider. 

The Speaker. Then the gentleman from Iowa can report when his 
conmaittee is called. 

The report was ordered to be printed and, with the joint resolution, 
recommitted, not to be brought back by a motion to reconsider. 

The report of the committee is as follows: 

The Committee on Manufactures, to whom was referred House resolution No. 125, 
having had the same under consideration, do make the following report thereon: 

The joint resolution proposes an amendment to the Constitution of the United 
States of great and immediate importance. The amendatory article proposed is as 
follows: 

"Article — . 

** Section 1. Congress, for promotion of trade and manufacture, and to carry into 
effect international treaties, shall have power to grant, protect, and regulate the 
exclusive right to adopt and use trade-marks." 

The occasion for the proposal of such an amendment, as is probably well known 
to every member of the House, is peculiar. Under the eighth section of article 1 of 
the Constitution Congress assumed the power granted by tliis amendment by the act 
of July 8, 1870, entitled "An act to revise, consolidate, and amend the statutes relating 
to patents and copyrights." That portion of said act material to this subject is as 
follows: 

"Any person or firm domiciled in the United States, and any corporation created 
by the authority of the United States, or of any State or Territory thereof, and any 
person, firm, or corporation resident of or located in any foreign country which, by 
treaty or convention, affords similar privileges to citizens of the United States, and 
who are entitled to the exclusive use of any lawful trade-mark, or who intend to 
adopt and use any trade-mark for exclusive use within the United States, may obtain 
protection for such lawful trade-mark by complying with the following requirements: 

* * First. By causing to be recorded in the Patent Ofiice a statement specifying the 
names of the parties, and their residences and place of business, who desire the pro- 
tection of the trade-mark; the class of merchandise and the particular description of 
goods comprised in such class by which the trade-mark has been or is intended to be 
appropriated; a description of the trade -mark itself, with fac-similes thereof showing 
the mode in which it has been or is intended to be applied and used, and the length 
of time, if any, during which the trade-mark has been in use. 

* ' Second. By making payment of a fee of $25 in the same manner and for the same 
purpose as the fee required for patents. 

"Third. By complying with such regulations as may be prescribed by the Com- 
missioner of Patents." 

Under these statutes it was further provided that such trade-marks should remain 
in force for thirty years, subject to indefinite renewals. The common-law remedies 
for infringement were also enacted. 

In August, 1876, further protection was given to the grantees of trade-marks by 
providing for the punishment of the fraudulent use, sale, and counterfeiting of such 
commercial symbols by fine and imprisonment. 



FORTY-SIXTH CONGEESS. 419 

Under these statutes the United States has registered trade-marks as follows: 

Trade-marks registered and fees received by Patent Office in trade-mark cases. 

Cases. 

In 1871 509 

In 1872 531 

In 1873 534 

In 1874 648 

In 1875 1,035 

In 1876 1,081 

In 1877 1, 416 

In 1878, (to October) 1,336 

7, 090, at $25, $177,250 

Remainder of 1878 $4,600 

To December 9, 1879 26,875 

31,475 

208 725 
Registered in 1870, 121 cases,at$25 3' 025 

Total registered, 7,785; total receipts 211, 750 

And has received in fees the sum of $211,750. Has entered into treaty obligations 
for the mutual protection of trade-marks with Great Britain, June 1, 1879; the 
Austria-Hungarian Empire, June 1, 1872; Belgium, July 30, 1869; France, April 16, 
1869; the German Empire, June 1, 1872; Russia, January 27, 1868; Brazil, June 17, 
1879. 

The business men of the world have awakened to the fact that manufacture and 
trade require national and international control and protection of genuine commer- 
cial signatures to identify and distinguish property made and marketed by cosmo- 
politan tradesmen. At this juncture the commercial world is astonished to find that 
alone among the nations the United States has no power to grant, protect, or regu- 
late trade-marks. This has been finally determined by the recent decision of the 
Supreme Court of the United States at the October term, 1879, in the cases of The 
United States v. Emil Stifflins; Same v. Adolph Witteman; Same v. W. W. Johnson, 
F. E. McNamara, and N. S. Reeder. 

As but a limited number of copies of that decision has been published, and it is so 
able and comprehensive as to be incapable of a satisfactory synopsis, your committee 
has deemed it best to set out the entire opinion. [See opinion attached. ] 

This, then, is the occasion which has arisen for the proposed change in the funda- 
mental charter of the Government. 

There arises two questions as to the propriety and necessity of the amendment: 

First. Is the subject of sufficient importance to demand of the States this addi- 
tional grant of constitutional power to the General Government? 

Second. Is it a matter of such character as to require the legislative control of the 
National Government, instead of being left to the local legislation of the several 
States? 

In answer to the first question, your committee deem it necessary to add but little 
to the facts already stated in the history of congressional and international action 
upon the subject. 

The following considerations may be added: 

The paramount interest of the Government to protect the innocent purchasers of 
manufactured goods from deception, frauds, and countless impositions. The bene- 
ficial effects of encouraging the establishment and maintenance of good commercial 
character on part of manufacturers protected by law. The stimulating and energiz- 
ing the trade and commerce of our own people; giving them equal chances with 
citizens of other nations. 

Trade-marks are now universally regarded as necessary to business. They have 
grown into use with the growth of civilization and progressive trade. All manufac- 
tures, all kinds of business adopt and use them. They are the ensigns of honor and 
popularity under which business men ship their goods from State to State and nation 
to nation. And now our commerce challenges the competition of the most pros- 
perous countries. We are fast becoming the merchants; and our ingenious, indus- 
trious, and enterprising people, above all others, need this commercial proprietary 
protection. 

As to the second question, your committee regard this as peculiarly the subject of 
national legislative control. 



420 EE VISION OF STATUTES RELATING TO PATENTS, ETC. 

Nothing could be more detrimental to the interests of manufacture, trade, and 
commerce than the unharmonious local and conflicting legislation which would nec- 
essarily arise if this subject should be left to the States. The interest and safety of 
all demand that it, along with the power of making war, peace, and treaties, of taxa- 
tion, regulating commerce and coining money, of granting patents and copyrights, 
should be vested in the General Government. 

No one State could adequately protect her own citizens, much less the citizens of 
other States. The mere civil rights existing at common law are insufficient and 
impractical. No criminal law of a State can be framed comprehensive enough to 
cover violations of the rights of persons injured. 

The treaty-making power, of which this becomes an incident, belongs solely to the 
General Government. 

The various coimtries of the world have assumed national control of this subject. 
Austria passed a law granting and protecting trade-marks December 7, 1858, with 
general provisions and penalties such as our present laws of Congress. Bavaria has 
had such a law since 1840. In Belgium trade-marks are governed by the decree of 
1801, the law of 1803, and decree of 1810. Great Britain has the ''merchandise 
marks act" of 1862. France passed such a law June 23, 1857. Prussia, Sardinia, 
Spain, Wiirtemberg, each have protective laws. 

The subject is not local. A trade-mark is ubiquitous. It knows no State line. It 
is of the essential nature of a patent and a copyright, in the method of its grants, 
regulations, and protection. 

In the interest of revenue and economy of government it is also an important 
national subject. It is a source of considerable revenue. 

The Government has already received at the hands of grantees of trade-marks 

imder the laws now declared unconstitutional $ . This sum must be refunded 

in justice to such parties unless the consideration for its receipt is made good by the 
adoption of this amendment and legislation under it. 

All these rights are now suspended and await action. Many of the State Legisla- 
tures meet this winter, and may ratify the proposed amendment at once. 

Your committee therefore, in view of these facts, regard this resolution of imme- 
diate importance and recommend its passage before adjournment for vacation. 



[House of Representatives, second session, December 17, 1879, Cong. Record, vol. 10, part 1, pp. 145-148.] 

TKADEMARKS. 

Mr. McCoiD, from the Committee on Manufactures, reported back 
with a favorable recommendation the joint resolution (H. Res. 125) 
proposing an amendment to the Constitution of the United States. 

The joint resolution was read, as follows: 

Resolved, <Scc., That the following amendment to the Constitution of the United 
States be proposed to the Legislatures of the several States: 

Article — , 

Section 1. Congress, for promotion of trade and manufactures, and to carry into 
effect international treaties, shall have power to grant, protect, and regulate the 
exclusive right to adopt and use trade-marks. 

That this amendment shall be valid when ratified by the Legislatures of three- 
fourths of the States. 

Mr. McCoiD. I ask the Clerk to read the report of the committee. 
The Clerk read as above. 

* * * * * * * 

Mr. McCoiD. Mr. Speaker, I had hoped that there would be no 
opposition to this resolution, having been induced so to believe from 
general consultation with members. The objection made this morn- 
ing is not to the substance of the resolution; and I have heard no 
substantial objection from any member either on this floor or out of 
the House. I believe there is no objection to the substance of the 
resolution. But it is said that it ought to have come from the Judi- 
ciary Committee. I think that is a mistake. The subject of trade- 
marks is peculiarly a subject within the province of the Committee on 
Manufactures; and has been so considered by the House, as indicated 



FOKTY-SIXTH CONGRESS. 421 

by the reference of the resolution to that committee. The committee 
met and considered the resolution; referred it to a subcommittee. 
That subcommittee gave it careful consideration, both as to the neces- 
sity and propriety of the measure and as to the form in which it is 
presented, and they unanimously made a favorable report to the com- 
mittee. The full committee, after careful consideration, reported 
unanimously in favor of the resolution. This measure, then, comes 
before the House upon a unanimous report of a committee to whom 
it was referred in regular order by direction of the House. It seems 
to me that the committee deserves the courtesy and consideration of 
this House, and that this report ought to be considered sufficient. 
The only province of the Judiciary Committee would be to consider 
the form of this resolution — whether it is in proper form for incor- 
poration in the Constitution; whether it complies with the constitu- 
tional provisions with reference to amendments. 

Now, that matter is easily settled; and it really has been settled. 
I will state to members of the House that this resolution was submitted 
to the chairman of the Committee on the Judiciary [Mr. Knott], and 
I believe it meets his hearty approval, both as to substance and form. 
It has met with no objection. 

A few words as to the importance of considering at present this 
unanimous report coming from the committee to whom the subject 
properly belongs. This winter the legislatures of twenty-one States 
meet. Almost all of them will not meet again until two years from 
this winter; hence the importance of submitting the amendment to 
the State legislatures this winter. These bodies meet generally on 
the 1st of January next. One State legislature is now in session — ■ 
perhaps two or three; but one has been in session since November, 
and will probably soon adjourn. To give this amendment the proper 
ratification two-thirds of the States must concur. Now, as gentlemen 
will see, it is no captious, unfair, or precipitate spirit that induces 
the committee to ask action upon it at this time. 

Upon the merits of the question allow me to say a single word. Con- 
gress has acted upon the supposition that it had power to legislate upon 
trademarks — to grant, regulate, and protect them. Since 1870 our 
legislation has proceeded upon the supposition that this power was 
included in the power of Congress to grant patents and copyrights. 
But the Supreme Court of the United States at its last term has decided 
that no such power is vested in Congress under the Constitution, either 
under the clause to which I have just referred or under the clause with 
reference to commerce or any other clause; so that all the legislation 
of Congress on this subject has fallen to the ground for want of con- 
stitutional power to enact it. In the exercise of this supposed power 
the Government has issued about 8,000 trademarks and has received 
$211,000 in fees. All these trademarks are now worthless so far as 
Congressional action is concerned, and the money received by the Gov- 
ernment as fees is without consideration, and in justice and equity will 
have to be refunded to the parties by whom it has been paid. Assum- 
ing Congress to possess this power, we have entered into treaties with 
the German Empire, with France, with Belgium, with Austria, and 
other nations. I have some extracts from these treaties. These coun- 
tries have national laws on the subject of trademarks. They protect 
our trademarks in their countries; and in these treaties we have agreed 
to protect their trademarks. But I ask gentlemen to observe that the 
power to enforce these treaties w ould not give us the power to protect 



422 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

these trademarks. I read the language of the treaty with the German 
Empire with reference to trademarks. 

We agree to give the same protection to the citizens of that Empire 
that we do to citizens of this country. Under this decision of the 
Supreme Court we have no power to give protection to citizens of this 
country ; and, therefore, we have no power to enforce that treaty in 
protecting the trademarks of that nation with whom we have entered 
into a solemn treaty obligation to meet its concurrent action in that 
respect. 

With France, the terms of the treaty are, "just as if the plaintiff 
were a subject or citizen of that country." We are to give them that 
protection. We have no power to give protection to citizens of this 
country, and therefore no power to give protection to citizens of France 
any more than to our own citizens. 

In the treaty with Austria, the language is this: "Shall give to the 
injured party ground for such action or proceeding to prevent such 
reproduction, and to recover damages for the same, as may be author- 
ized by the laws of the country in which the counterfeit is proven, 
just as if the plaintiff was a citizen of that country." We can give 
their citizens no protection because we can give our own none. We 
can give theirs only what we can give our own. So gentlemen will 
see this grant of power is important in reference to treaties with for- 
eign nations. 

It comes home to every man's district, to every man's constituents. 
I have no doubt there is not a single citizen represented upon the floor 
of this House who would not urge the immediate passage of this joint 
resolution. I have letters from various parts of the country urging 
this action. There is not a member of the House who has made a single 
objection to it. The form of the resolution is as it should be. I ask 
gentlemen who have opposed ordering the main question to be put not 
to carry that opposition to voting against the passage of the joint 
resolution. 

Mr. Armfield. Mr. Speaker, I am opposed to this joint resolution, 
not because it does not come from the Judiciary Committee, but 
because I believe it to be totally unnecessary to amend the Constitution 
of the United States in order to attain the object which the gentleman 
from Iowa seeks. 

It is true the Supreme Court of the United States has decided that 
the present trademark law is unconstitutional. They place that deci- 
sion upon the ground that Congress undertook to legislate on the sub- 
ject of trademarks under the wrong clause of the Constitution; that 
Congress undertook to assume jurisdiction over this subject under the 
clause which allows Congress to grant patents, to grant copyrights to 
the authors of books, etc. The Supreme Court have decided that a 
trademark has no affinity to patent-rights or to copyrights; and they 
indicate in that decision what I believe to be perfectly clear, that trade- 
marks come under the commerce clause of the Constitution, that clause 
which gives Congress power to regulate commerce between the States 
and foreign nations. 

I have had the honor to present a bill to this House, which has been 
referred to the Committee on Commerce, which, I think, wiU avoid 
the constitutional difficulty and fully attain the end the gentleman 
desires. 

Under that clause which allows Congress to regulate commerce 
between the States and foreign nations Congress has full power to 



FORTY-SIXTH CONGRESS. 428 

protect trademarks so far as they are used in interstate commerce and 
commerce with foreign nations. And this is all that is necessary. It 
is no more necessary for the Congress of the United States to protect 
trademarks within the boundaries of a State than it is for them to 
protect the cattle trade of a State or the corn or cotton trade of a 
State. The law of the States and the common law fully protect a 
man's right to a trademark, and all that is necessary is for Congress 
to pass a law to protect trademarks when used in commerce between 
different States and with foreign nations. My bill, I think, fully 
covers the ground and attains the end. I do not think it is best, when- 
ever we find Congress lacks some power under the Constitution, to 
rush in with hot haste to give that power to Congress without first 
inquiring whether it is necessary. 

Mr. McCoiD. I should like to ask the gentleman a question. 

Mr. Armfield. Certainly. 

Mr. McCoiD. Does not the reasoning of the decision of the Supreme 
Court cover the whole point that trademarks can not be regulated 
under the power to control commerce ? 

Mr. Armfield. Not at all, as I understand it. I have read the deci- 
sion, and understand they decided it is only unconstitutional because 
Congress attempted to regulate commerce within the boundaries of a 
State. The bill I have prepared, I will state to the gentleman, has 
been examined by some of the best lawyers of the United States of 
both political parties, and every lawyer to whom it has been submitted 
is of the opinion that it will completely avoid the constitutional objec- 
tion found in the decision of the Supreme Court of the United States, 
and that it will insure all necessary protection to trademarks. 

Mr. Samford. Where is it? 

Mr. Armfield. In the hands of the Committee on Commerce. 

Mr. Cox. It is very evident, Mr. Speaker, from the statement made 
by my friend from North Carolina and the statement of the gentleman 
from Iowa that this measure needs the revision of the Judiciary Com- 
mittee. I think the bill of my friend ought also to be referred to that 
committee, which has its special function to look after these matters 
connected with constitutional interpretation. 

I had something to do with the passage of this bill about trade- 
marks. It passed without much discussion. Whether it came under 
that clause in the eighth section about copyright, about authors and 
inventors, or whether it came under the clause as to commerce, it is no 
matter now, for the Supreme Court have decided these trademarks, as 
we at present legalize them, are not constitutional. 

Then comes the further question that we have made treaties with 
foreign powers as to these trademarks, guaranteeing them under cer- 
tain conditions. The question arises, is a treaty the paramount law 
of the land? The Constitution says so. How far has that been inter- 
preted so as to reach trademarks? These questions need very careful 
judicial interpretation. This is a fresh decision of the Supreme Court 
which comes in collision with a long line of decisions. We have 
received over 1200,000 in payment of fees on this business. Our trade 
is being disorganized because of this decision. Let us, therefore, with- 
out passing on the merits of either of the bills, refer them to the Judi- 
ciary Committee, in order that we may have a judicial and judicious 
report. I will make that motion, if it be in order, directly. 

The Speaker. It is not in order. 

Mr. HoRR. Mr. Speaker, the only objection in private conversation 
S. Doc. 20 28^- 



424 EEVISION OF STATUTES EELATING TO PATENTS, ETC. 

that I have heard to this bill is that it comes from the wrong com- 
mittee. Now, being a member of the Committee on Manufactures, 1 
desire in the first place to speak for a moment on that point. When 
I came here I had an exceeding desire that I might get on a committee 
that should sound big and have little to do; and if our Speaker had the 
powers of a modern clairvoyant he could not have hit my case better 
than he did. [Laughter.] Why, sir, every paper in my district has 
announced that I am on the important Committee on Manufactures. 
[Laughter.] 

I wish to say, Mr. Speaker, that I feel a little sensitive about this 
bill. It is the only child that committee has got [laughter], and, as 
near as I can learn, it is the only one they ever have had. [Renewed 
laughter.] In searching back through the records of that committee 
we have as yet been unable to find that for the last eighteen years 
there has ever been anything which was proposed by our committee 
that did not immediately take its flight to the Judiciary Committee. 
You can see, therefore, why I am naturally sensitive about this. We 
considered this an important bill, and if it is to be jeopardized by the 
fact that it is not in the hands of the right committee, I say we should 
transfer it in any way to get it in shape, because, if it is to do the 
country immediate good it should be passed before the holidays, 
because the legislatures are so soon coming together. I suppose 
every member of this House knows that the decision of the Supreme 
Court injured largely our great manufacturing interests all over the 
land. It is not sectional. 

Mr. Cox. My friend will allow me to make a practical suggestion. 
I think, from the vote already taken in the House, it is perfectly sure 
two-thirds will not vote for this measure without some more mature 
consideration. If my friend from North Carolina wants to kill this 
biU 

Mr. HoER. From where? 

A Member. He said from North Carolina. [Laughter.] 

Mr. HoRR. No, from Michigan; but I can stand almost anything, 
Mr. Speaker. [Laughter.] 

Mr. Cox. My friend, I know his name 

Mr. Wright. What is it? 

Mr. Cox. I do not want to say, sir. [Laughter.] I was about to 
suggest to my friend from Michigan that if he wants the bill really 
passed so as to submit it in time to the State legislatures — if he wants 
to relieve the great industry bound up with these trademarks — he had 
better allow it to go to the Committee on the Judiciary, for the last 
vote we have had indicates his bill may be throttled — that this little 
bantling may be considered illegitimate. [Laughter.] 

Mr. HoRR. The gentleman should not forget that the vote was taken 
before I made this explanation. [Laughter.] There is hardly any- 
thing I would not yield to my genial little friend from New York. 
[Laughter.] 

Mr. Cox. I waive size. [Laughter.] 

Mr. HoRR. But I am not sure, Mr. Speaker, but his suggestion is a 
wise one. While we on the Committee on Manufactures, so far as I 
know, have for this bantling the affection of a parent, we still are will- 
ing to yield anything for the sake of its passage. As my friend from 
Iowa stated, there have already been collected over ^200,000 of fees 
which are now declared, perhaps, illegally collected. Our Government 
may be asked to refund money paid for something which it could not 



FORTY-SIXTH CONGEESS. 425 

grant. I do not believe there is a gentleman on either side of this 
House who does not believe it best that our General Government 
should have some control over this business of trademarks. I am not 
captious about it. What I want is that that course shall be taken 
which shall result in the passage of this bill, but I yield to older and 
wiser men in this House who have had more experience than I have 
had, to determine what that course shall be. 

I do not wish to embarrass the bill by seeking to drive it to a vote 
at an improper time. All I wish to say is that I believe the manufac- 
turing interests of the country demand that a measure of this kind 
shall be passed now. I think the decision of the Supreme Court pre- 
vents any one absolutely from getting any protection on this question 
except what can be got by an action at common law. In most cases 
that remedy is worthless, because the damages in each case of violation 
are so slight. 

The trespasses upon the law are so numerous that it is utterly impos- 
sible in that way to get your remedy and have it of any value to the 
interests that are affected by this law having been declared unconsti- 
tutional. I do hope the members of the House will see to it that the 
measure is not entirely killed here and now, for I believe we all want 
the same thing. 

Mr. McCoiD. I wish to say a word in reply to the gentleman on 
my left [Mr. Armfield], who supposes that his bill will bring this 
within the constitutional power of Congress by making it a regulation 
of commerce. The Supreme Court has expressly distinguished the 
difference between articles of commerce and trademarks. A trade- 
mark is not an article of commerce. The question of transit from 
State to State or from nation to nation has no reference to trademarks. 
The office of the trademark is to distinguish the goods of a certain 
manufacturer. Because the articles upon which a trademark is stamped 
are shipped in commerce, that does not give Congress the power to 
regulate a trademark; and the Supreme Court has made that express 
distinction. They refer to the very argument which has been used by 
the gentleman from North Carolina: 

The argument is that the use of a trademark — that which alone gives it any value — 
is to identify a particular class or quality of goods as the manufacture, produce, or 
property of the person who puts them in the general market for sale; that the sale 
of the article so distinguished is commerce. The trademark is, therefore, a useful 
and valuable aid or instrument of commerce, and its regulation by virtue of the 
above provision of the Constitution belongs to Congress, and that the act in question 
is a lawful exercise of this power. 

Now they take that argument, and expressly say the trademark is 
not included: 

It is not every species of property which is the subject of commerce, or which ia 
used or even essential in commerce, which is brought by this clause of the Constitu- 
tion within the control of Congress. 

They go on to give reasons to show that the power to control com- 
merce does not give the power to control trademarks. If the gentle- 
man will read that portion of the decision on page 5 of the report he 
will find that clearly made out by the decision of the Supreme Court. 

If I believed that was a good position which the gentleman takes I 
would see no necessity for passing this resolution. And further, if 
I believed that if the resolution were referred to the Judiciary Com- 
mittee that committee would report back before the recess, I would 
have no objection to that course. If we could include that as an instruc- 
tion to report back before the recess, or at the assembling of the House 



426 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

after the recess, and thus have some reasonable prospect that the reso- 
lution would pass in time to get to the legislatures, I would not object. 

Mr. Cox. I ask unanimous consent that both these bills be referred 
to the Committee on the Judiciary, with leave to report at any time. 
Whenever the committee come to an agreement they can report. I 
think the gentleman had better accept that. 

Mr. McCoiD. I am constrained to consent to something of that kind, 
because I do not wish to jeopardize the resolution. 

The Speaker. It is proposed that further proceedings under the 
ordering of the main question be vacated and that, by unanimous 
consent, this bill go, with a bill now in the hands of the Committee on 
Commerce, introduced b}^ the gentlemen from North Carolina [Mr. 
Armfield], to the Committee on the Judiciar}^ with leave to that 
committee to report thereon at any time. The Chair hears no objection. 

The joint resolution was accordingh^ referred to the Committee on 
the eludiciary, and the Committee on Commerce was discharged from 
the further consideration of the bill (H. R. 2573) to authorize regis- 
tration and protection of trademarks; and the same was also referred 
to the Committee on the Judiciary, with leave to that committee to 
report on the joint resolution and bill at any time. 



H. R. 2573. — A bill to authorize registration and protection of trademarks. Intro- 
duced by Hon. R. F. Armfield, of Xorth Carolina, December 9, 1879. Re- 
ferred to Committee on Commerce. H. R. 5088 reported as a substitute. 
[Hoiise of Representatives, second session, December 9, 1879, Cong. Record, vol. 10, parti, p. 38.J 

TRADEMARKS. 

Mr. Armfield introduced a bill (H. R. 2573) to authorize registration 
and protection of trademarks; which was read a first and second time, 
referred to the Committee on Commerce, and ordered to be printed. 



[House of Representatives, second session, December 17, 1879, Cong. Record, vol. 10, part 1, p. 1-48.] 

* * * The Committee on Commerce was discharged from the 
further consideration of the bill (H. R. 2573) to authorize registration 
and protection of trademarks; and the same was also referred to the 
Committee on the Judiciary. 



[House of Representatives, second session, January 6, 1880, Cong. Record, vol. 10, part 1, p. 197.] 

TRADEMARKS. 

Mr. Reagan also, b}^ unanimous consent, from the same committee 
[Commerce] reported back the bill (H. R. 2573) to authorize registra- 
tion and protection of trademarks; and moved that the committee be 
discharged from the further consideration of the same, and that it be 
referred to the Committee on the Judiciary. 

The motior was agreed to. 

The bill is as follows: 

A BILL to authorize registration and protection of trade marks. 

Be it enacted by the Senate and House of Representatives of the United States of America 
in Congress assembled, That there shall be in the Department of the Interior an offi- 
cer learned in the law, to be called the registrar of trade marks who shall be 
appointed by the President of the United States, by and with the advice and consent 
of the Senate, and shall be entitled to a salary of three thousand five hundred dol- 
lars a year, to be paid monthly. 

Sec. 2. Owners of trade marks used in commerce with foreign nations, or among 
the several States, or with the Indian tribes, provided such owners shall be domiciled 
in the United States, or located in any foreign country which by treaty, convention, 
or law affords similar privileges to citizens of the United States, may obtain registra- 
tion of such trade mark by complying with the following requirements; 



FORTY-SIXTH CONGRESS. 427 

First: By depositing in the office of said registrar a written application specifying 
name, domicile, location and citizenship of the party applying; the class of merchan- 
dise and the particular description of goods comprised in such class to which the par- 
ticular trade mark has been appropriated; a description of the trade mark itself, with 
fac-similes thereof, and a statement of the mode in which the same is applied and 
affixed to goods, and the length of time during which the trade mark has been used. 

Second: By paying into the Treasury of the United States the sum of twenty-five 
dollars. 

Sec. 3. The application prescribed in the foregoing section must, in order to create 
an)'^ right whatever in favor of the party filing it, be accompanied by a written declara- 
tion, verified by the person or by a member of a firm, or by an officer of a corporation 
applying, to the effect that such party has at the time a right to the use of the trade 
mark sought to be registered, and that no other person, firm or corporation has the right 
to such use, either in the identical form or in any such near resemblance thereto as 
might be calculated to deceive; that such trade mark is used in commerce, as above 
indicated, and other than that which is wholly between citizens of the same State; 
and that the description and fac-similes presented for registry truly represent the 
trade mark sought to be registered. 

Sec. 4. The time of receipt of any such application shall be noted and recorded. 
But no alleged trade mark shall be registered unless the same appear to be lawfully 
used as such by the applicant in foreign or interstate commerce, as above mentioned, 
or is within the provision of a treaty, convention or declaration with a foreign power; 
nor which is merely the name of the applicant; nor which is identical with a regis- 
tered or known trade mark owned by another and appropriate to the same class of 
merchandise, or which so nearly resembles some other person's lawful trade mark 
as to be hkely to cause confusion or mistake in the mind of the public or to deceive 
purchasers. In an application for registration the registrar shall decide the presump- 
tive lawfulness of claim to the alleged trade mark; and in any dispute between an 
applicant and a previous registrant, or between applicants, he shall follow, so far as 
the same may be apphcable, the practice of courts of equity of the United States in 
analogous cases. From a final decision of the registrar a summary appeal shall lie to 
the supreme court of the District of Columbia, sitting in banc. 

Sec. 5. Certificates of registry of trade marks shall be issued in the name of the 
United States of America, under the seal of the Department of the Interior, and 
shall be signed by the Secretary of said Department and countersigned by the regis- 
trar of trade marks, and a record thereof, together with printed copies of the specifi- 
cations, shall be kept in books for that purpose. Copies of trade marks, and of state- 
ments and declarations filed therewith, and certificates of registry so signed and 
sealed, shall be evidence in any suit in which such trade mark shall be brought in 
controversy. 

Sec. 6. A certificate of registry shall remain in force for thirty years from its date, 
except in cases where the trade mark is claimed for and applied to articles not man- 
ufactured in this country, and in which it receives protection under the laws of a 
foreign country for a shorter period, in which case it shall cease to have any force in 
this country, by virtue of (their) act, at the time that such trade mark ceases to be 
exclusive property elsewhere. At any time during the six months prior to the expi- 
ration of the term of thirty years, such registration may be renewed on the same 
terms and for a like period. 

Sec. 7. Applicants for registration under this act shall be credited for any fee, or 
part of a fee, heretofore paid by them into the Treasury of the United States with 
intent to procure protection for the same trade-mark. 

Sec. 8. Registration of a trade mark shall be prima facie evidence of ownership. 
Any person who shaU reproduce, counterfeit, copy, or colorably imitate any trade 
mark registered under this act and affix the same to merchandise of substantially the 
same descriptive properties as those described in the registration, shall be liable to 
an action on the case for damages for the wrongful use of said trade mark, at the 
suit of the owner thereof; and the party aggrieved shall also have his remedy accord- 
ing to the course of equity to enjoin the wrongful use of such trade mark used in for- 
eign or interstate commerce, as aforesaid, and to recover compensation therefor in 
any court having jurisdiction over the person guilty of such wrongful act, and Courts 
of the United States shall have original and appellate jurisdiction in such cases with- 
out regard to the amount in controversy. 

Sec 9. No action or suit shall be maintained under the provisions of this act in any 
case when the trade-mark is used in any unlawful business, or upon any article inju- 
rious in itself, or which mark has been used with the design of deceiving the public in 
the purchase of merchandise, or under any certificate of registry fraudulently obtained. 

Sec. 10. Any person who shall procure the registry of a trade-mark, or of himself 
as the owner of a trade mark, or an entry respecting a trade mark, in the office of the 
registrar of trade marks, by a false or fraudulent representation or declaration, orally 
or in writing, or by any fraudulent means, shall be liable to pay any damages sus- 



428 REVISION OF STATUTES EELATING TO PATENTS, ETC. 

tained in consequence thereof to the injured party, to be recovered in an action in 
the case. 

Sec. 11. Nothing in this act shall prevent, lessen, impeach or avoid any remedy in 
law or in equity which any party aggrieved by any wrongful use of any trade mark 
might have had if the provisions of this act had not been passed. 

Sec. 12. Nothing in this act shall be construed as unfavorably affecting a claim to 
a trade mark after the term of registration shall have expired; nor to give cognizance 
to any court of the United States in an action or suit between citizens of the same 
State, unless the trade mark in controversy is used on goods intended to be trans- 
ported from one state to another state for the purpose of commerce, or to a foreign 
country, or in lawful commercial intercourse with an Indian tribe. 

Sec. 13. The registrar shall prescribe rules for assignments for duly registered 
trade marks and the recording thereof in his office. 

H. R. 2981. — A bill providing a stamp tax on certain articles, and to afford inci- 
dental protection to trademarks. Introduced by Hon. Lucien B. 
Caswell, of Wisconsin, December 15, 1879. Referred to Conunittee 
on Patents. Not reported. 

[House of Representatives, second session, December 15, 1879, Cong. Record, vol. 10, part 1, p. 112.] 

TRADEMAEKS. 

Mr. Caswell also introduced a bill (H. R. 2981) providing a stamp 
tax on certain articles, and to afford incidental protection to trade- 
marks; which was read a first and second time, referred to the Com- 
mittee on Patents, and ordered to be printed. 

H. R. 5088. — A bill to authorize the registration of trademarks and to protect the 
same. Introduced by Hon. N. J. Hammond, of Georgia, March 12, 
1880. Reported as a substitute for H. R. 2573 and H. Res. 125. 
Passed in House and in Senate. Approved by the President, March 
3, 1881 (21 U. S. Stat. L., p. 502, chap. 138.) 

[House of Representatives, second session, March 12, 1880, Cong. Record, vol. 10, part 2, p. 1514.] 

TRADEMARKS. 

Mr. Hammond, of Georgia, from the Committee on the Judiciary, 
to whom was referred House resolution No. 125, " to amend the Con- 
stitution of the United States," and a bill (H. R. 2673) "to authorize 
the registration and protection of trademarks," and several petitions 
on the same subject, by unanimous consent, reported, as a substitute, 
a bill (H. E. 5088) to authorize the registration of trademarks, and to 
protect the same; which was read a first and second time, and, with 
the accompanying report, recommitted, and ordered to be printed. 

[House Report No. 561, Forty-sixth Congress, second session.] 

REPORT BY COMMITTEE ON THE JUDICIARY ON PROPOSED AMENDMENT 
TO THE CONSTITUTION AND H. R. 2573, TO AUTHORIZE REGISTRATION 
OF TRADEMARKS, ETC. 

At the October term, 1879, the Supreme Court of the United States 
decided the case of Emil Steffens and others advs. The United States, 
being indictments for violations of the trademark acts of the United 
States. They held those acts to be void because unconstitutional. As 
the opinion states the character of those acts and why they are uncon- 
stitutional, and that this report may be full and clear, we present it 
entire, as follows: 

DECISION OF THE SUPREME COURT. 

Mr. Justice Miller delivered the opinion of the court. (See ante, p. 413.) 
The bill seeks to reenact substantially the trademark legislation of 
1870 (Rev. Stat., sees. 4937-4947, inclusive), save that it is confined to 



KOHTY -SIXTH CONGRESS. 429 

foreign and interstate commerce. Its theory is that by thus separat- 
ing them from interstate commerce the objections of the Supreme 
Court as to constitutionality will be removed. 
The resolution to amend the Constitution is as follows; 

Article XVI. 

Section 1. Congress, for promotion of trade and manufacture, and to carry into 
effect international treaties, shall have power to grant, protect, and regulate the 
exclusive right to adopt and use trade-marks. 

It is based upon the idea that such legislation, though confined to 
foreign and interstate commerce, is unconstitutional, or its advocates 
may only fear that that may be so, and wish the amendment ex abun- 
dante cautela^ and to give confidence to those using trademarks. 

If the Congress of the United States now has power to pass such laws, 
the amendment would be useless. Has it that power ? 

After careful consideration we are of opinion that it has not. The 
Supreme Court in the foregoing opinion avoided deciding that ques- 
tion. A trademark is a convenience of commerce. Its purpose is to 
identify the thing to be sold. But it is no more than the guaranty in 
writing, or by some words, sign, or device, attached to the thing to 
be sold, that it is what the seller represents it to be by such writing, 
etc. By themselves they are not merchandise. Their only use is to 
attach to merchandise for such identification. They are not necessary 
to commerce. On the countless things sold in this country, foreign 
and domestic, there are no trademarks but on about 8,000. 

In Paul V. Virginia (8 Wallace) the court held that Congressional 
control did not cover policies of insurance sent from one State of the 
Union into another where a premium was paid therefor. They said the 
policies were but "mere contracts of indemnity against loss by fire." 
We think trademarks mere contracts of indemnity against loss by 
fraud. 

Thus the Supreme Court has held a contract to be within Federal 
control in Almy v. California. That was a bill of lading for goods to 
be shipped out of the State. But that decision rested solely upon the 
ground that ''a bill of lading or some other instrument of the same 
import is necessarily always associated with every shipment of articles 
of commerce from the ports of one country to another. The necessi- 
ties of commerce require it." (See Almy v, California, 24 Howard, 
170.) And that decision rests not on the power of Congress over com- 
merce, but on the prohibition against the States taxing exports, etc. 
The bill of lading was but evidence of the contract of shipping. Tax- 
ing it taxed the exported article. And in the Pennsylvania Telegraph 
Company v. Western Union Telegraph Company (96 U. S. R. , 9) the 
court pronounced the telegraph "one of the necessities of commerce. 
It is indispensable as a means of intercommunication, but especially 
so in commercial transactions." We think this last case could better 
stand on the power "to establish post-offices and post-roads." Yet, 
if put on the commerce clause, it, like Almy v. California, is based on 
the necessity of the thing legislated upon to foreign or interstate or 
Indian commerce. As we have said, trademarks are not necessary to 
such commerce. But even if they were, our opinion would be 
unchanged. In the case of Steffens, quoted above, the court said: 

It is not every species of property which is the subject of commerce, or which is 
used or even essential in commerce, which is brought by this clause of the Constitu- 
tion (commerce clause) within the control of Congress. The barrels and casks, the 



430 REVISION OF STATUTES RELATING TO PATENTTS, ETC. 

bottles and boxes in which alone certain articles of commerce are kept for safety, and 
by which their contents are transferred from the seller to the buyer, do not thereby 
become subjects of Congressional legislation more than other property. 

But, while we think Congress can not so legislate with regard to 
trademarks under the power "to regulate commerce with foreign 
nations, and among the several States and with the Indian tribes" 
(article 1, section 8, Constitution), trademarks, in commerce with for- 
eign nations and with the Indian tribes, can be protected under the 
treaty-making power. 

The President has ' ' power, by and with the advice and consent of 
the Senate, to make treaties, provided two-thirds of the Senators 
present concur." (Constitution, article 2, section 2.) ''AH treaties 
made, or which shall be made, under the authority of the United 
States," are laws of equal dignity with United States statutes. (Con- 
stitution, article 6, section 2.) If complete in themselves, they are 
self-operative. If they need legislative aid. Congress can give it 
under its power "to make all laws which shall be necessar}^ and 
proper for carrying into execution the foregoing powers, and all other 
powers vested by the Constitution in the Government of the United 
States, or in any department or officer thereof." (Last clause, article 
1, section 8, Constitution.) 

In United States v. Coombs (12 Peters, R., 72) it was held that, 
though under the commerce clause certain offenses on land might not 
be reached, yet they could be punished under that general clause. 
The court said: "Any offense which thus interferes with or obstructs 
or prevents such commerce and navigation, though done on land, may 
be punished by Congress under its general authority to make all 
laws necessary and proper to execute their delegated constitutional 
authority." 

Having thus disposed of trademarks in commerce with foreign 
nations and the Indian tribes, we have remaining interstate commerce. 
Trademarks are used in interstate commerce upon articles patented 
and not patented. Under the power of Congress of "securing for 
limited times * * * to inventors the exclusive right to their 
respective * * * discoveries" (article 1, section 8) and to give 
such protection. Congress has forbidden anyone to "mark upon any- 
thing made, used, or sold by him for which he has not obtained a 
patent the name or imitation of the name " of the patentee, or to put 
"patent," "patentee," or "letters patent," or "any word of like 
import, with intent to imitate or counterfeit the mark or device of the 
patentee," without his consent, and prescribed a penal t}^ for a viola- 
tion. (Rev. Stat., sec. 4900.) If the language is not broad enough, 
or the penalty be not severe enough, Congress may, under that power, 
give further protection to trademarks on patented goods. Thus may 
Congress now protect " any person who has invented or discovered 
any new and useful art, machine, manufacture, or composition of 
matter, or any new and useful improvement thereof not known or 
used by others " and patentable under the laws of the United States. 
(Rev. Stat., sec. 4886.) 

The sole remaining question is whether the protection of trade- 
marks upon things not patentable demands an amendment of our 
organic law. 

The owners of trademarks now have, in every State of the Union, 
the common-law protection of injunction to protect and an action for 
damages to punish their infringement. In nineteen of the States there 



FORTY-SIXTH CONGRESS. 431 

are severe penal statutes against tampering with trademarks. These 
statutes have been made as the developments of trade demanded. In 
all probability they would have been made in many other States had 
Congress not attempted to legislate upon the subject. Certainly the 
States have shown no unwillingness to protect this species of property. 

The wish for uniformity in this regard throughout the Union would 
apply to many things which our fathers left to the sole control of the 
States. The Constitution of our country owes much of the considera- 
tion and reverence which we have for it to its stability. It should 
never be amended save for compelling reasons. Therefore, without 
disparaging the importance of trademarks, the committee thinks the 
arguments in favor of the amendment are insufficient, and that the 
resolution should be reported back to the House with a recommenda- 
tion that it do not pass. 

As some legislation on this subject is greatly desired by manufac- 
turers and merchants, and as some may be needed to systematize the 
registration of trademarks, we recommend the passage of the biU 
hereto attached. 

It is the bill introduced by Mr. Armfield somewhat modified. It 
reenacts the sections 4937-494:7 of the Revised Statutes almost ver- 
batim, except that its operations are confined to trademarks used in 
commerce with the Indian tribes and foreign nations. 

This bill omits the first section of Mr. Armfield's bill, for these rea- 
sons: The committee know no good reason for the creation of a new 
office and new salary to accomplish this work. They perceive no good 
reason for taking this matter from the Patent Office. One of the main 
reasons urged for any law on the subject is to comply with existing 
treaties. In each of these treaties owners of foreign trademarks are 
required to deposit them in the Patent Office. The law made to aid 
the treaties should conform thereto, and we have made the bill through- 
out to conform to that purpose. 

Your committee have added the act of 1876, '' to punish the counter- 
feiting of trade-mark goods, and the sale or dealing in counterfeit 
trade-mark goods," because, b}^ some this is thought to be absolutely 
necessary to protect this species of property. Those provisions are 
in Statutes at Large, volume 19, pages 141 and 142. 

The appeal to the supreme court of the District of Columbia is 
omitted because it is thought unnecessary. 

The committee also add to the bill that our citizens wishing to regis- 
ter trademarks in foreign countries, where prior registration here is 
a condition precedent to registration there, may register here for such 
purpose. 

The committee recommend the passage of the accompanying substi- 
tute. 

[House of Representatives, second session, April 23, 1880, Cong. Record, vol. 10, part 3, pp. 2701-2707]. 
REGISTRATION OF TRADE-MARKS. 

Mr. Hammond, of Georgia. Mr. Speaker, I rise to a privileged 
motion which I desired to make 3^esterday, and that is to call up the 
bill touching legislation in regard to trademarks to carry out certain 
treaties made between this country and foreign governments. 

Mr. Conger. Is this a privileged question ? 

Mr. Cox. It is. The Committee on the Judiciary was allowed to 
report at any time. I made the motion, I remember, very distinctly. 



432 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

Mr. Hammond, of Georgia. I ask to call up a bill (H. R. No. 5088) 
to authorize the registration of trade-marks and protect the same, which 
was reported from the Committee on the Judiciary as a substitute for 
House bill No. 2573 and House joint resolution No. 125, in order that 
it may be considered at this time. 

The bill was read, as follows: 

A BILL (H. R. No. 5088) to authorize the registration of trade-marks and protect the same. 

Be it enacted, etc., That owners of trade-marks used in commerce with foreign 
nations, or with the Indian tribes, provided such owners shall be domiciled in the 
United States, or located in any foreign country which, by treaty, convention, or 
law, affords similar privileges to citizens of the United States, may obtain registration 
of such trade-marks by complying with the following requirements: 

First. By causing to be recorded in the Patent Office a statement specifying name, 
domicile, location, and citizenship of the party applying; the class of merchandise 
and the particular description of goods comprised in such class to which the partic- 
ular trade-mark has been appropriated; a description of the trade-mark itself, with 
facsimiles thereof, and a statement of the mode in which the same is applied and 
affixed to goods, and the length of time during which the trade-mark has been used. 

Second. By paying into the Treasury of the United States the sum of $25, and 
complying with such regulations as may be prescribed by the Commissioner of 
Patents. 

Sec. 2. That the application prescribed in the foregoing section must, in order to 
create any right whatever in favor of the party filing it, be accompanied by a written 
declaration verified by the person, or by a member of a firm, or by an officer of a 
corporation applying, to the effect that such party has at the time a right to the use 
of the trade-mark sought to be registered, and that no other person, firm, or cor- 
poration has the right to such use, either in the identical form or in any such near 
resemblance thereto as might be calculated to deceive; that such trade-mark is used 
in commerce with foreign nations, or Indian tribes, as above indicated; and that the 
description and facsimiles presented for registry truly represent the trade-mark 
sought to be registered. 

Sec. 3. That the time of the receipt of any such application shall be noted and 
recorded. But no alleged trade-mark shall be registered unless the same appear to 
be lawfully used as such by the applicant in foreign commerce or commerce with 
Indian tribes as above mentioned, or is within the provision of a treaty, convention, 
or declaration with a foreign power ; nor which is merely the name of the applicant ; 
nor which is identical with a registered or known trade-mark owned by another and 
appropriate to the same class of merchandise, or which so nearly resembles some 
other person's lawful trade-mark as to be likely to cause confusion or mistake in the 
mind of the public, or to deceive purchasers. In an application for registration the 
Commissioner of Patents shall decide the presumptive lawfulness of claim to the 
alleged trade-mark ; and in any dispute between an applicant and a previous regis- 
trant, or between applicants, he shall follow, so far as the same may be applicable, 
the practice of courts of equity of the United States in analogous cases. 

Sec. 4. That certificates of registry of trade-marks shall be issued in the name of 
the United States of America, under the seal of the Department of the Interior, and 
shall be signed by the Commissioner of Patents, and a record thereof, together with 
printed copies of the specifications, shall be kept in books for that purpose. Copies 
of trade-marks and of statements and declarations filed therewith and certificates of 
registry so signed and sealed shall be evidence in any suit in which such trade-marks 
shall be brought in controversy. 

Sec. 5. That a certificate of registry shall remain in force for thirty years from its 
date, except in cases where the trade-mark is claimed for and applied to articles not 
manufactured in this country, and in which it receives protection under the laws of 
a foreign country for a shorter period, in which case it shall cease to have any force 
in this country by virtue of this act at the time that such trade-mark ceases to be 
exclusive property elsewhere. At any time during the six months prior to the expi- 
ration of the term of thirty years such registration may be renewed on the same 
terms and for a like period. 

Sec. 6. That applicants for registration under this act shall be credited for any fee, 
or part of a fee, heretofore paid by them into the Treasury of the United States with 
intent to procure protection for the same trade-mark. 

Sec. 7. That registration of a trade-mark shall be prima facie evidence of owner- 
ship. Any person who shall reproduce, counterfeit, copy, or colorably imitate any 



FOETY-SIXTH CONGRESS. 438 

trade-mark registered under this act and affix the same to merchandise of substan- 
tially the same descriptive properties as those described in the registration shall be 
liable to an action on the case for damages for the wrongful use of said trade-mark at 
the suit of the owner thereof; and the party aggrieved shall also have his remedy 
according to the course of equity to enjoin the wrongful use of such trade-mark used 
in foreign commerce or commerce with Indian tribes, as aforesaid, and to recover 
compensation therefor in any court having jurisdiction over the person guilty of such 
wrongful act; and courts of the United States shall have original and appellate juris- 
diction in such cases without regard to the amount in controversy. 

Sec. 8. That no action or suit shall be maintained under the provisions of this act 
in any case when the trade-mark is used in any unlawful business, or upon any arti- 
cle injurious in itself or which mark has been used with the design of deceiving the 
public in the purchase of merchandise, or under any certificate of registry fraudulently 
obtained. 

Sec. 9. That any person who shall procure the registry of a trade-mark, or of him- 
self as the owner of a trade-mark, or an entry respecting a trade-mark, in the office of 
the Commissioner of Patents, by a false or fraudulent representation or declaration, 
orally or in writing, or by any fraudulent means, shall be liable to pay any damages 
sustained in consequence thereof to the injured party, to be recovered in an action on 
the case. 

Sec. 10. That nothing in this act shall prevent, lessen, impeach, or avoid any rem- 
edy at law or in equity which any party aggrieved by any wrongful use of any trade- 
mark might have had if the provisions of this act had not been passed. 

Sec. 11. That nothing in this act shall be construed as unfavorably affecting a claim 
to a trade-mark after the term of registration shall have expired ; nor to give cogni- 
zance to any court of the United States in an action or suit between citizens of the 
same State, unless the trade-mark in controversy is used on goods intended to be 
transported to a foreign country, or in lawful commercial intercourse with an Indian 
tribe. 

Sec. 12. That the Commissioner of Patents is authorized to make rules and regula- 
tions and prescribe forms for the transfer of the right to use trade-marks and for 
recording such transfers in his office. 

Sec. 13. That citizens and residents of this country wishing the protection of trade- 
marks in any foreign country, the laws of which require registration here as a condi- 
tion precedent to getting such protection there, may register their trade-marks for 
that purpose as is above allowed to foreigners, and have certificate thereof from the 
Patent Office. 

Sec. 14. That every person who shall, with intent to defraud, deal in or sell, or 
keep or offer for sale, or cause or procure the sale of, any goods of substantially the 
same descriptive properties as those referred to in the registration of any trade-mark, 
pursuant to the Statutes of the United States, to which, or to the package in which the 
same are put up, if fraudulently affixed said trade-mark, or any colorable imitation 
thereof, calculated to deceive the public, knowing the same to be counterfeit or not 
the genuine goods referred to in said registration, shall, on conviction thereof, be pun- 
ished by fine not exceeding $1,000 or imprisonment not more than two years, or both 
such fine and imprisonment. 

Sec. 15. That every person who fraudulently affixes, or causes or procures to be 
fraudulently affixed, any trade-mark registered pursuant to the statutes of the 
United States, or any colorable imitation thereof, calculated to deceive the public, 
to any goods of substantially the same descriptive properties as those referred to in 
said registration, or to the package in which they are put up, knowing the same to 
be counterfeit, or not the genuine goods referred to in said registration, shall, on con- 
viction thereof, be punished as prescribed in the fourteenth section of this act. 

Sec. 16. That every person who fraudulently fills, or causes or procures to be 
fraudulently filled, any package to which is affixed any trade-mark, registered pur- 
suant to the statutes of the United States, or any colorable imitation thereof, calcu- 
lated to deceive the public, with any goods of substantially the same descriptive 
properties as those referred to in said registration, knowing the same to be counter- 
feit, or not the genuine goods referred to in said registration, shall, on conviction 
thereof, be punished as prescribed in the fourteenth section of this act. 

Sec. 17. That any person or persons who shall, with intent to defraud any person 
or persons, knowingly and willfully cast, engrave, or manufacture, or have in his, 
her, or their possession, or buy, sell, offer for sale, or deal in, any die or dies, plate or 
plates, brand or brands, engraving or engravings, on wood, stone, metal, or other sub- 
stance, molds, or any false representation, likeness, copy, or colorable imitation of 
any die, plate, brand, engraving, or mold of any private label, brand, stamp, wrap- 
per, engraving on paper or other substance, or trade-mark, registered pursuant to the 



434 EEVISIOK OF STATUTES RELATING TO PATENTS, ETC. 

statutes of the United States, shall, upon conviction thereof, be punished as prescribed 
in the fourteenth section of this act. 

Sec. 18. That any person or persons who shall, with intent to defraud any person 
or persons, knowingly and willfully make, forge, or counterfeit, or have in his, her, 
or their possession, or buy, sell, offer for sale, or deal in, any representation, like- 
ness, similitude, copy, or colorable imitation of any private label, brand, stamp, 
wrapper, engraving, mold, or trade-mark, registered pursuant to the statutes of the 
United States, shall, upon conviction thereof, be punished as prescribed in the four- 
teenth section of this act. 

Sec. 19. That any person who shall, with intent to injure or defraud the owner 
of any trade-mark, or any other person lawfully entitled to use or protect the same 
buy, sell, offer for sale, deal in, or have in his possession any used or empty box, 
envelope, wrapper, case, bottle, or other package, to which is affixed, so that the 
same may be obliterated without substantial injury to such box or other thing afore- 
said, any trade-mark registered pursuant to the statutes of the United States, not so 
defaced, erased, obliterated, and destroyed as to prevent its fraudulent use, shall, on 
conviction thereof, be punished as prescribed in the fourteenth section of this act. 

Sec. 20. That if the owner of any trade-mark registered pursuant to the statutes of 
the United States, or his agent, make oath in writing that he has reason to believe 
and does believe that any counterfeit dies, plates, brands, engravings on wood, stone, 
metal, or other substance, or molds of his said registered trade-mark are in the pos- 
session of any person, with intent to use the same for the purpose of deception and 
fraud, or make such oaths that any counterfeits or colorable imitations of his said 
trade-mark, label, brand, stamp, wrapper, engraving on paper or other substance, or 
empty box, envelope, wrapper, case, bottle, or other package, to which is affixed said 
registered trade-mark not so defaced, eraced, obliterated, and destroyed as to prevent 
its fraudulent use, are in the possession of any person, with intent to use the same 
for the purpose of deception and fraud, then the several judges of the circuit and 
district courts of the United States and the commissioners of the circuit courts may, 
within their respective jurisdictions, proceed under the law relating to search 
warrants, and may issue a search warrant authorizing and directing the marshal of 
the United States for the proper district to search for and seize all said counterfeit 
dies, plates, brands, engravings on wood, stone, metal, or other substance, molds, 
and said counterfeit trade-marks, colorable imitations thereof, labels, brands, stamps, 
wrappers, engra\dngs on paper or other substance, and said empty boxes, envelopes, 
wrappers, cases, bottles, or other packages that can be found ; and upon satisfactory 
proof being made that said counterfeit dies, plates, brands, engravings on wood, 
stone, metal, or other substance, molds, counterfeit trade-marks, colorable imitations 
thereof, labels, brands, stamps, wrappers, engravings on paper or other substance, 
empty boxes, envelopes, wrappers, cases, bottles, or other packages, are to be used 
by the holder or owner for the purposes of deception and fraud, that any of said 
judges shall have full power to order all said counterfeit dies, plates, brands, engrav- 
ings on wood, stone, metal, or other substance, molds, counterfeit trade-marks, color- 
able imitations thereof, labels, brands, stamps, wrappers, engravings on paper or 
other substance, empty boxes, envelopes, wrappers, cases, bottles, or other packages 
to be publicly destroyed. 

Sec. 21. That any person who shall, with intent to defraud any person or persons, 
knowingly and willfully aid or abet in the violation of any of the provisions of this 
act shall, upon conviction thereof, be punished by a fine not exceeding $500, or 
imprisonment not more than one year, or both such fine and imprisonment. 

Mr. Hammond, of Georgia. The report submitted by the committee 
carried with it not only the bill known as the Armfield bill, but the 
resolution introduced by the gentleman from Iowa [Mr. McCoid], touch- 
ing the same subject-matter. The reference covers both, and therefore 
I made a motion to take up the report and the matter covered thereby, 
and in the argument I shall make in favor of the bill I shall also present 
the view of the Judiciary Committee in opposition to the resolution. 

In 1870 Congress passed the dozen sections of the Revised Statutes 
of the United States, sections 4937 et seq., relating to trade-marks. 
They prescribed the terms upon which any person in the United 
States or ''in any foreign country which, by treaty or convention, 
affords similar privileges to citizens of the United States," entitled 
to a trade-mark, should be protected therein. The remedies thereb}^ 
prescribed for infringement of one's rights in that regard were injunc- 



FORTY-SIXTH CONGRESS. 435 

tion and action on the case for damages. In August, 1876, Congress 
passed another act 'Ho punish the counterfeiting of trade-mark goods 
and the sale of or dealing in of counterfeit trade-mark goods." (United 
States Statutes, volume 19, page 141.) That act made many crimes 
relating to trade-marks, each punishable '' b}^ fine not exceeding $1,000 
or imprisonment not more than two years, or both such fine and 
imprisonment. " 

In November, 1879, the Supreme Court held all that legislation to be 
unconstitutional and void. See Steffens and others v. The United States, 
October term Supreme Court, 1879. Congress had never legislated 
upon the subject before ; nor since has there been any such legislation, 
unless the registration of prints and labels under the copyright act of 
1874 (Statutes 18, p. 79) be so classed. It, however, is on a difierent 
subject, and, when attacked, may fall under the same condemnation. 
The United States is therefore without any statutory rules for regis- 
tration and protection of trade-mark rights. 

By some this is thought to be a serious want. Those who think it can 
be now constitutionally supplied ask Congress to pass the bill called the 
Armfield bill, "To authorize the registration and protection of trade- 
marks." That bill was referred to the Committee on Commerce on 
the 9th of December last, and on the 17th of that month referred to 
the Committee on the Judiciary. 

That bill proposed to put trade-marks under the control of a salaried 
officer, newly made by the bill, and allow an appeal from his decision 
to the supreme court of the District of Columbia. In all other respects 
it is substantially, indeed almost literally, the legislation of 1870 with 
this modification only: it is confined to commerce with foreign nations, 
with the Indian tribes, and among the several States. Its friends 
claimed that thus all objections on the score of constitutionality would 
be removed. It will be perceived from the report which I had the 
honor to present that the Judiciary Committee did not agree to that 
conclusion. So far as I am advised, that committee unanimously 
believed that so much of that bill as applied to commerce among the 
several States would be unconstitutional. That 1 may be understood, 
let me call attention to the points made in that report. 

TRADE-MARKS ON INTERSTATE COMMERCE NOT IN CONGRESSIONAL POWER. 

Congress has power ""to regulate commerce with foreign nations 
and among the several States and with the Indian tribes." (Constitu- 
tion, art. 1, sec. 8.) But is legislation as to trade-marks regulating 
commerce ? 

The Supreme Court in the case of Steffens, heretofore cited, avoided 
any expression of opinion on this point. They said only this, namely: 

The argument is that the use of a trade-mark — that which alone gives it any value- 
is io identify a particular class or quality of goods as the manufacture, produce, or property 
of the person who puts them in the general market for sale. That the sale of the article so 
distinguished is commerce. The trade-mark is, therefore, a useful and valuable aid 
or instrument of commerce, and its regulation by virtue of the above provision of 
the Constitution belongs to Congress, and that the act in question is a lawful exercise 
of this power. 

It is not every species of property which is the subject of commerce, or which is 
used or even essential in commerce, which is brought by this clause of the Constitu- 
tion within the control of Congress. The barrels and casks, the bottles and boxes in 
which alone certain articles of cor^ merce are kept for safety and by which their con- 
tents are transferred from the seller to the buyer, do not thereby become subjects of 
Congressional legislation more than other property. (Nathan v. Louisiana, 8 How. , 73.) 



43G REVISION OF STATUTES RELATING TO PATENTS, ETC. 

In the case of Paul v. Virginia (8 Wallace, 168) this court held that a policy of insur- 
ance made by a corporation of one State on property situated in another was not an 
article of comm-erce and did not come within the purview of the clause of the Con- 
stitution we are considering. "They are not," says the court, "commodities to be 
shipped or forwarded from one State to another, and then put up for sale." On the 
other hand, in the case of Almy v. The State of California (24 How., 169) it was 
held that a stamp duty imposed by the legislature of California on b^'ls of lading for 
gold and silver transported from any place in that State to another out of the State 
was forbidden by the Constitution of the United States, because such instruments 
were a necessity to the transaction of commerce, and the duty was a tax upon exports. 
The question, therefore, whether the trade-mark bears such a relation to commerce 
in general terms as to bring it within Congressional coi trol, when used or applied to 
the classes of commerce which fall within that control, is one which, in the present 
case, we propose to leave undecided. (United Statee ;. Steffens, October term, 1879.) 

Let us examine the question. A trade-mark is property but is not 
the subject of commerce. It is not bought or sold. In itself it is 
worthless. It is only valuable when attached to merchandise which 
is to be sold. In the license cases it was argued that diseases, etc., 
attended commerce, and therefore disease-breeding commerce was 
be3^ond State control and within the Federal jurisdiction. But Chief 
Justice Taney said no; ^' they are not things to be regulated and traf- 
ficked in." (5 How. \J. S. R., 576.) Trade-marks are not essential to 
commerce. Out of the myriads of things trafficked in by the people 
of this countr}^ less than eight thousand are under trade-marks. Every 
manufactured article trafficked needs, for protection and shipping, a 
barrel or cask, a bottle or box or wrapper; and yet who would have 
ever supposed them subject to Congressional control if the decision in 
United States v. Steffens had omitted to say they were not? 

A policy of insurance is sold and sent from one State to another, and 
may be transferred again and again. But in no fair sense is it an 
article of merchandise. ''^They are not commodities to be shipped or 
forwarded from one State to another and then be put up for sale," 
said the court in Paul v. Virginia, and they are ''mere contracts of 
indemnity against loss by fire," said Justice Field in the telegraph case 
(96 U. S. R.), and therefore the}^ were under State jurisdiction, and 
not Federal control. 

When affixed to merchandise to identify its origin or quality or the 
like, what is a trade-mark but ^'a contract of indemnity against loss" 
by fraud or deceit? It is but the owner's guarantee. It is weaker in 
this regard than the policy of insurance, for the trade-mark is never 
sold. Possibly it is stronger than the policy, because attached to a 
thing sold. But I think not. A merchant in Georgia shipping his 
cotton to New York or Liverpool wishes to guarantee its quantity and 
quality, and writes such paper to whom it may concern in his office. 
It is a contract controlled wholly by State laws. Congress can not 
legislate to punish any one for counterfeiting that paper, or using that 
paper to defraud another. Surely the wildest dreamer would not call 
such legislation regulatmg commerce. Now how is the case changed, 
if that paper be pasted on the bale of cotton? But when so pasted on 
it would be just such a contract as a trade-mark attached to an article; 
no more and no less. 

True, the court has held that a State may not tax a bill of lading. 
But why? Not because Congress had power to legislate as to them, 
but because the States were prohibited from taxing exports, etc., and 
taxing such contracts was virtually taxing exports. They said: 



FORTY-SIXTH CONGRESS. 437 

A bill of lading, or some other instrument of the same import, is necessanly alvays 
associated with every shipment of articles of commerce from the ports of one country 
to another. The necessities of commerce require it. It is hardly less necessary to the 
existence of such commerce than casks to cover tobacco x)y bagging to cover cotton, 
when such articles are exported to a foreign country, for no one would put his prop- 
erty in the hands of a shipmaster without taking written evidence of its reception 
on board the vessel and the purpose for which it was placed in his hands. * * ^ 
A bill of lading, or some equivalent instrument of writing, is invariably associated 
with eve7^ cargo of merchandise exported to a foreign country, and consequently a duty 
upon that is in substance and effect a duty on an article exported. (Almy v. Califor- 
nia, 24 Howard, R. 170.) 

In United States v. Steffens you observed the court said that decision 
was ''''hecause such instruments were necessities of commerce." And 
yet in Steffens's case they also said not even such necessit}^ would make 
Congressional control complete. For surely the box or barrel or other 
receptacle of the thinj]f sold is as necessary to commerce as a bill of 
lading, and they are not in Congressional control. Nor can the opinion 
of the divided court in Pennsylvania Telegraph Company v. Western 
Union Telegraph Company (96 U. S. R., 9) be used against this view. 
It rather strengthens it. The court there said the electric telegraph 
has become "one of the necessities of commerce. It is indispensable as 
a means of intercommunication^ but especially so in commercial trans- 
actions." * * * "Goods are sold and money paid upon telegraphic 
orders; contracts are made by telegraphic correspondence; cargoes 
secured and the movement of ships directed." But in no fair sense 
can trade-marks be likened to telegraphic communication. They are 
not sent forward to secure contracts and the like. And it took both 
the commerce clause and the post-office clause to support that opinion. 
I repeat, trade-marks are but a convenience of commerce. They are 
no more necessary to comme-rce than are the photographed or engraved 
cuts of manufactured articles, nor more numerous. And if this legis- 
lation would be constitutional, Congress may engage in regulating the 
picture business. 

But valuable as are the opinions of the Supreme Court they should 
not be the measure of the power we shall exercise in Congress. They 
pass upon State laws said to conflict with the supreme law, and may 
give the benefit of doubts in favor of the Federal power or the States 
as they like. But Congress is coordinate with the court and the leg- 
islative body of the Government, whose ermine they wear. They 
must therefore hold Congressional legislation valid unless manifestly 
and plainly unconstitutional. The only safety, then, is for Congress 
to solve its doubts against the exercise of power. If it will not, the 
result is Congress can do all things not plainly forbidden. This is at 
war with the plan of our fathers. That plan restricted Congress to 
the exercise of certain delegated powers. One of them was regulating 
commerce. That power was delegated to the United States that the 
States might not cripple commerce. 

The sixth article of confederation declared: 

No State shall lay any imposts or duties which, may interfere with any stipulations in 
treaties entered into by the United States, &c. 

By article 9 the States reserved the power of "imposing such imposts 
and duties on foreigners as their own people are subjected to" and the 
power of "prohibiting the exportation or importation of any species 
of goods or commodities whatsoever. " The Constitution gave Congress 
the power "to regulate commerce with foreign nations, and among the 



438 EEVISION OF STATUTES RELATING TO PATENTS, ETC. 

several States and with the Indian tribes" (article 1, section 7) and (by 
article 2, section 10) put the States under this disability: 

No State shall, without the consent of the Congress, lay any imposts or duties on 
imports or exports, except what may be absolutely necessary for executing its inspec- 
tion laws; and the net produce of all duties and imposts, laid by any State on imports 
or exports, shall be for the use of the Treasury of the United States; and all such 
laws shall be subject to the revision and control of the Congress. 

Freedom from State constraint was the thing sought and secured. 

The right to regulate the commerce thus freed from conflicting 
State control was not to grant such control as is here claimed. Grant 
this demand and who can deny the right of Congress to prescribe the 
weight and size of a bale of cotton, the form of a package for wheat 
or tobacco, to be shipped from one State to another? 

I know that Congress has undertaken to control the shipment of 
cattle and nitroglycerine from one State to another. But if that legis- 
lation be constitutional it may rest upon that defensive power inherent 
in all governments to protect their subjects or citizens from disease 
and death. On that ground the Supreme Court of the United States, 
in the License Cases, sustained the power of the States to legislate 
against intoxicating drinks, even though such legislation touched 
imports, etc. Besides, cattle and nitroglycerine are things sold, while 
trade-marks are not. Thus the Committee on the Judiciary found 
itself compelled to strike interstate commerce from the bill. 

FOEEIGN TRADE-MAEKS. 

The next question was. Can we constitutionally legislate as to for- 
eign trade-marks ? The President of the United States has "power, 
by and with the advice and co-nsent of the Senate, to make treaties, 
provided two-thirds of the Senators present concur." (Constitution, 
article 2, section 2.) Congress has "power to make all laws neces- 
sary and proper for carrying into execution the foregoing powers and 
all other powers vested by the Constitution in the Government of the 
United States or in any department or officer thereof." (Article 1, 
section 8, Constitution.) Congress, though powerless in this regard 
under the commerce clause, may so legislate in aid of the treaty- 
making power. This idea is fully illustrated and sustained by the 
Supreme Court in United States v. Coombs (12 Peters's Reports, 78). 
The question was, whether certain obstructions to commerce, not at 
sea nor within tide marks, but on land, could be punished by Con- 
gress? The court said: 

Any offense which thus interferes with or obstructs or prevents such commerce 
and navigation, though done on land, may be punished by Congress under its general 
authority to make all laws necessary and proper to execute their delegated constitu- 
tional authority. 

I do not enter into the extent of the treaty -making power. The 
contest between that power and the control of all commercial ques- 
tions by Congress, which began with the treaty with the Creek India. is 
in 1790 and remains unsettled to this day, is not involved in this issuo. 
Sufficient for present purposes is the decision of Marshall, Chief 
Justice, in Foster & Elam v. Neilson (2 Peters): "A treaty is to be 
regarded in courts of justice as equivalent to an act of the legislature 
whenever it operates of itself, without aid of any legislative provi- 
sion," whi(;h language was adopted in United States v. Forty-three 
Gallons of Whisky (96 U. S. R., 146). This being true, all that is 



FORTY-SIXTH CONGRESS. 439 

desirable in this regard may be done by the treaty -making power 
alone, or by it and Congress together. The treaty -making power has 
entered into certain obligations as to trade-marks with various foreign 
nations. That the exact nature of these obligations may be under- 
stood, I quote them even at the expense of being tedious. 

TREATIES AS TO TRADE-MARKS. 

We had many commercial treaties prior to the trade-mark act of 
1870. But in three of them only were trade-marks mentioned or con- 
sidered, namely, those with Kussia and Belgium, made in 1868, and 
with France, made in 1869. That with Russia was as follows: 

The high contracting parties, desiring to secure complete and efficient protection 
to the manufacturing industry of their respective citizens and subjects, agree that 
any counterfeiting in one of the two countries of the trade-marks affixed in the other 
on merchandise, to show its origin and quality, shall he slrictly prohibited and repressed, 
and shall give ground for an action of damages in favor of the injured party, to be 
prosecuted in the courts of the country in which the counterfeit shall be proven. 

The trade-marks in which the citizens or subjects of one of the two countries may 
wish to secure the right of property in the other, must be lodged exclusively, to wit, 
the marks of citizens of the United States in the department of manufactures and 
inland commerce at St. Petersburg, and the marks of Kussian subjects at the Patent 
Office at Washington. 

Subsequently, in March, 1874, the same parties "having recognized 
the necessity of defining and rendermg more efficacious" said stipula- 
tions, "agreed upon the following arrangements:" 

Article I. 

With regard to marks of goods, or of their packages, and also with regard to marks 
of manufacture and trade, the citizens of the United States of America shall enjoy 
in Russia, and Russian subjects shall enjoy in the United States, the same protection 
as native citizens. (Coddington's Dig. of Trade-Marks, 484, 485, 486.) 

The treaty of 1868 with Belgium was the same as that with Russia, 
except that the words "and repressed" after ''shall be prohibited" 
were omitted, Brussels was substituted for St. Petersburg, and this 
was added: "It is understood that if a trade-mark has become public 
property in the country of its origin, it shall be equally free to all in 
the other countrv." This treaty was renewed m haec verba in 1875. 
(lb., 488, 489, 490, 491.) 

The French treaty was: 
; Article I. 

Every reproduction in one of the two countries of trade-marks affixed in the other 
to certain merchandise to prove its origin and quality is forbidden and shall give ground 
for an action of damages in favor of the injured party > to be prosecuted ni the courts 
of the country in which the counterfeit shall be proven, just as if the plaintiff was a 
subject or citizen of that country. 

The exclusive right to use a trade-mark for the benefit of citizens of 
the United States in France, or of French subjects in the territory 
of the United States, can not exist for a longer period than that fixed 
by the laws of the country for its own citizens. 

"If the trade-mark has become public property in the countrj^ of its 
origin, it shall be equally free to all in the other country." Paris is 
named as the place for recording trade-marks of our citizens, the 
Patent Office in Washington for Frenchmen. (lb., 491, 492.) 

Those treaties made after the act of 1870 were with Austria, the 
German Empire, Great Britain, and Brazil. That with Austria, pro- 
claimed in 1872, is exactly like that with France, except that after 
S. Doc. 20 29* 



440 REVISION OF STATUTES EELATING TO PATENTS, ETC. 

declaring such reproduction of trade-marks '''' is forbidden'^'^ th^ lan- 
guage is: 

And shall give to the injured party ground for such action or proceedings to pre- 
vent such reproduction and to recover damages for the same as may be authorized 
by the laws of the countrv in which the counterfeit is ^royen just as if the plaintiff was 
a citizen of thai country. (lb., 494.) 

That with the German Empire, proclaimed on the same day in 1872, 
simply declared: 

With regard to the marks of labels of goods or of their packages, and also with 
regard to patterns and marks of manufacture and trade, the citizens of Germany shall 
enjoy in the United States of America, g^nd American citizens shall enjoy in Germany, 
the same protection as native citizens. (lb., 496.) 

The treaty with England, proclaimed in 1878, declared: 

The subjects or citizens of each of the contracting parties shall have in the domin- 
ions and possessions of the other the same rights as belong to native subjects or citizens, 
or as are now granted or may hereafter be granted to the subjects and citizens of the 
most favored nations, in everything relating to property in trade-marks and trade- 
labels. 

And it obliged the claimant only to "fulfill the formalities required 
by the law of the respective countries." (20 U. S. Stats., 703.) 

The treaty with Brazil, proclaimed in 1879, gives ''the same rights 
as belong to native citizens or subjects in everything relating to prop- 
erty in marks of manufacture and trade," and declares that "any per- 
son who desires to obtain the aforesaid protection must fulfill the 
formalities required by the laws of their respective countries." (Act 
of 1879.) 

Those treaties undertook to secure to the citizens of those foreign 
nations with respect to trade-marks all the rights which our own cit- 
izens enjoyed; no more, but no less. What those rights were was 
fully stated by Judge Story in 1844, in Taylor v. Carpenter: 

When the plaintiffs were manufacturers in England of " Taylor's Prussian thread,'* 
and the defendant, in America, imitated their names, trade-marks, envelopes, and 
labels, and placed them on thread of a different manufacture; held that it w^as a 
fraudulent infringement by the defendant of the right of the plaintiff, for which 
equity would grant relief, whether other persons had or had not done the same. In 
the courts of the United States alien friends are entitled to claim the same protection 
of their rights as citizens. (3 Story's Eeports, 458.) 

That "aliens have the same rights as citizens in respect to the pro- 
tection of their trade-marks" was decided as to '* Chinese Liniment" 
in 1849 by Judge McLean. (See Coffeen v. Brunton, 4 McLean, 516.) 
And so Davis's " Pain Killer " was protected in Canada in 1867, " LL" 
whisky in Ireland in 1863, and others which might be cited. And at 
the date of the treaties with France, Belgium, and Russia, and long 
before, besides the protection given in the United States courts and 
all our State courts by injunctions and actions for damages, many of 
the State courts punished infringement of trade-marks by fine and 
imprisonment. It was so in Connecticut, Massachusetts, Michigan, 
Missouri, Nevada, New York, Ohio, Oregon, and Pennsylvania. And 
many others since then have enacted such penal statutes. 

All these rights were acquired by such treaties for the foreign sub- 
jects because possessed b}^ our citizens. The treaties proprio vigore 
gave those rights. Our Patent Office, the place designated in the 
treaties for depositing those trade-marks, was established already. 
Many foreign trade-marks were lodged there before the act of 1870 



FOETY-SIXTH CONaRESS. 441 

was passed. Foreign manufacturers and traders and our officers 
regarded these treaties as self-executing. 

But as the treaty with Russia declared that counterfeiting of trade- 
marks "shall be strictly prohibited and repressed," as that with Bel- 
gium said it ''shall be prohibited," and as the common law was not in 
force in Russia, Belgium, or France, the legislation of 1870 was urged 
upon Congress. It is plain from the debates that it never could have 
passed had it not been thought important in aid of those treaties. 
(See the remarks of Senators Sumner and Carpenter on this point, 
Congressional Globe, vol. 80, p. 4821.) 

And now petitions from the Board of Trade of Philadelphia, and 
from some of the largest and most influential manufacturers of New 
York, ask for such legislation. And they urge no reason therefor but 
our treaty and commercial relations with foreign nations. No other 
petitions on the subject have been presented to Congress, so far as 
the Committee on the Judiciary is advised, except one from Boston 
in favor of a constitutional amendment hereafter mentioned. The 
Committee on the Judiciary recognized the importance of main- 
taining not only every treaty obligation of the United States, but 
of doing so in such a manner as to keep the confidence of the world. 
They know the benefits of foreign markets for the products of the 
brain and muscle of our people. They confess to a feeling of pride 
that we not only minister to the comfort and pleasure of our neigh- 
bors, but that they dig their wealth from the bowels of the earth with 
Yankee picks, and keep it away from thieves with Yankee locks. 
And therefore they directed me to report Mr. Armfield's bill for 
passage, striking out only the new office and new salary because we 
thought them unnecessary, and interstate commerce because it could 
not be constitutionally retained. 

If the foregoing position is true, the whole subject of trade-marks 
with those in treaty relations to us is eliminated from this discussion. 
What else may be eliminated? Many articles which bear trade-marks 
are patented. The patentee must fix thereon or on the package con- 
taining the same the word "patented," stating the day and year of the 
patent. He may put that in any form which will give notice, and sign 
it by his name. Should anyone in any manner "mark upon anything 
made, used, or sold by him for which he has not obtained a patent the 
name or any imitation of the name" of the patentee without his con- 
sent, or if such person puts "patent," "patentee," or " letters-patent," 
" or any word of like import with intent to imitate or counterfeit the 
marh or demce of the patentee " without such consent, he shall for each 
ofi'ense suffer a penalty of not less than ^100. (Rev. Stat., 4900.) If 
this statute is not now broad enough to protect all such trade-marks 
'as may be affixed to patented articles, it can be made so hj an amend- 
ment of the patent laws. 

The Committee on the Judiciary have omitted to say anything in 
the bill on this subject. They doubt whether such an incongruous 
medley as a civil punishment for infringing a patent or the mark 
thereof as is now provided by law, with a criminal proceeding to 
punish such infringement of the same mark if registered as a trade- 
mark, could do any good. It might do harm, and we are not aware 
that patentees are asking any further protection than is given by 
present laws. 



442 EE VISION OF STATUTES KELATING TO PATENTS, ETC. 



THE PE1«5AL SECTIONS OF THIS ACT. 



Thus far I am in full accord with the Committee on the Judiciary 
on the bill reported for passage. But here I part from them, and, pur- 
suant to notice given in committee, at the proper time will move to 
strike out all the penal sections. The report of the Committee no 
the Judiciary shows that they added to the Armfield bill the penal 
enactments of 1876 (19 Statutes, 141, 142), being all of the reported 
bill after section 14. Those sections punish every person who deals 
in or sells or keeps or offers for sale or procures the sale of goods cov- 
ered by a colorable imitation of a trade-mark, or puts a trade-mark on 
goods made to imitate trade-mark goods, or fills a bottle or box, etc., 
covered by a trade-mark with an imitation of its intended contents, 
or has plates, etc., to make false trade-marks, or imitate a trade- 
mark, or sells a bottle, etc. , having on it a trade-mark which he can 
erase without destroying it. If he do either with intent to defraud, 
the punishment is a fine not exceeding ^1,000 or imprisonment not 
more than two years, or both such fine and imprisonment. It pun- 
ishes aiders and abettors with one-half of said fine and one-half of 
the imprisonment. 

To those sections I can not assent. Mark it! No treaty obligation 
demanded this act of 1876. The bill was introduced into the Senate and 
passed there without discussion. It was so carelessly written that the 
language covered commerce wholly within the States, as well as with- 
out. It was so hastily gotten up that its short title is ungrammatical 
and the Supreme Court did not know what Congress intended to 
express by the act. One of its friends sought to pass it in the House 
without a reference, claiming it was a bill to ''' protect honest mer- 
chants and manufacturers.-' (17 Record, 4493.) It was referred, not 
to «, law committee, but to the Committee on Patents, who had noth- 
ing to do with crimes. They reported it back saying four hundred 
manufacturers, merchants, and dealers, in New York, Boston, and 
Philadelphia, had petitioned for its passage. They gave no other 
reason therefor, but called the previous question. At the last moment 
Mr. Hewitt, of New York, tried to protest for the thousands of small 
dealers in New York who might be entrapped by its provisions, but 
it was forced through. It is not strange that a creature of such hasty 
and violent birth languished, and, languishing, died in less than 
three years. The eight eminent doctors who tried to save its life said 
they knew not what was its ailment except that it was stuffed with 
incongruous food, and that it might have died anyhow even if it nad 
not swallowed the States. 

Shall we resurrect the corpse? Shall we give to those owners of 
trade-marks, protected by treaties which pledged only such protection 
as our own citizens have for theirs, this high right which our citizens 
can not enjoy in this country ? It would be at least decent to wait till 
we could put our own citizens on the same plane with foreigners and 
Indians. Wait till the McCoid amendment becomes a part of the Con- 
stitution — you who urge its passage. Do not enact this and then urge 
McCoid's amendment because the foreigner and Indian is better pro- 
tected than our citizen, amend the Constitution to make it fit a statute. 

Have gentlemen thought of the severity of this punishment? He 
who fraudulently imitates a mark or device on a patented' article com- 
mits no crime. He may be sued for $100 for each offense. (Rev. Stat,, 
4900.) 



FOETY-SIXTH C0NGEES3. . 443 

Take another case. On an American vessel in mid-ocean is a young 
girl returning home. In charge of the master, she has the right to be 
secure against even discourtesy. But forgetful of his duty as a man, 
despising his sacred trust, in the darkness of night he attacks her, 
alone, friendless, helpless, and with threats seduces and deflowers her. 
In Georgia we could put one at hard labor for twenty years for such a 
crime. Death would be too good for the scoundrel. But see that man 
at the bar of a United States court, convicted of thus violating section 
5319 of the Revised Statutes, and hear the judge, burning with virtuous 
indignation, pronounce on him the extreme penalty of the law, a fine 
of $1,000 and imprisonment for twelve months. And imagine him 
adding, "I regret that you are not found guilty of fraudulently put- 
ting a false drink in a bottle having on it the trade-mark of 'LL' 
whisky; for then I could punish you at least double as much as I can 
for this diabolical crime." 

But not only is the punishment too severe, but it is bad policy to 
increase the criminal jurisdiction of the United States courts, unless 
it be necessary in order to maintain the power, dignity, or purity of 
the Government or some of its departments. Before the war it was 
rare to see a prisoner before such courts. Violations of the postal 
laws were almost the only crimes then known to its practice. But 
now the business is changed. The criminal dockets occupy the whole 
time of the courts. The swarm of consequent officers are a burden to 
the people, and the penalties inflicted are often unjust to the criminals. 

This punishment means more than like punishment inflicted by 
State authority. It means pursuit by men who arrest not to vindi- 
cate the law, but to be paid for releases. It means a system of spies 
in every neighborhood. It means arrest by military and not civil 
officers only. It means indignities to prisoners. It means trial away 
from home and without convenient counsel and witnesses. It means 
conviction and banishment to distant prisons, far off from the aid 
and sympathy of friends and children and wives. Under a forced 
construction of the statutes by the Attorney-General, all the prisoners 
of the United States are sent to Albany or Detroit, upon the pretext 
that they are '•convenient" and the State prisons are not ''suit- 
able" or "available." (Rev. Stat., 5546.) It means a life broken 
by disease or death in a felon's cell. I do not overdraw the picture. 
Four men, convicted of illicit distillation, left the bar of a United 
States court for the penitentiary in Albany simultaneously. One was 
rescued by a pardon; death relieved the keeper of the custody of the 
other three. 

It is not mercy nor a desire to reform the prisoners which has caused 
the United States courts to allow hundreds of men to plead guilty of 
violating its revenue laws and then to go away without bail and with- 
out punishment, save a threat of severity if caught again. This ridic- 
ulous farce has been carried on for years under orders from the law 
head of this Government. Why? Because the punishments are so 
ill-suited to the crimes that the country staggers when called upon to 
execute their sentences. Let us not only make no more such severe 
penal laws, but have the manliness to denounce those already of force 
and wipe the disgrace forever from our statute books. 

I am told the laws would not be enforced, but are needed to pre- 
vent the crimes. The advocates of the bill would invoke the majesty 
of the United States to frighten citizens. No such spirit breathes 



444 EEV-ISION OF STATUTES EELATING TO PATENTS, ETC' 

from the Constitution. If you would not have laws despised, pass 
none which you will not enforce. Make laws to provoke love, not to 
excite terror. 

I will not wear}^ the House by a critical notice of the twentieth sec- 
tion of the bill. Let me call attention to two things in it. It gives 
about the same right of search for fraudulent trade-marks and plates, 
etc. , for making them, as the Government uses to protect its currency. 
It authorizes seizures of private property and its destruction by a 
judge. The citizen is convicted of fraudulent purposes without trial 
by jury. The mention of these things will condemn that section 

McCOID'S CONSTITUTIONAL AMENDMENT. 

But another important question remains. The report shows that 
the friends of trade-marks seek to enlarge the powers of Congress 
that it may legislate thereon. The proposition is to amend as follows: 

Article I. 

Section 1. Congress, for promotion of trade and manufactures and to carry into 
effect international treaties, shall have power to grant, protect, and regulate the exclu- 
sive right to adopt and use trade-marks. 

It was introduced in the House on the 2d of December, 1879, and 
referred to the Committee on Manufactures, of which its author is a 
member, and on the 11th of December, 1879, that committee reported 
in favor of its adoption. (See Report No. 3, Forty-sixth Congress, 
second session.) On the 17th of December, 1879, its author sought to 
pass it in the House, without discussion, under the operation of the 
previous question. He said there could be no objection to its passage. 
Mr. Armfield, thinking it unnecessary, opposed its passage. Finally 
the House awoke to the awkwardness of amending the Constitution 
thus hurriedly, and it was proposed to refer the resolution and Mr. 
Armiield's bill, then before the Committee on Commerce, to the Com- 
mittee on the Judiciary. The chairman of the Committee on Manu- 
factures, Mr. Horr, of Michigan, begged that the only bill which his 
committee had ever had (as he said) should not be taken away. But 
the proposition to refer was carried, with the quasi pledge that the 
Judiciary Committee would report early. It redeemed the pledge as 
soon as the importance of the subject justified a report. It is fair to 
assume that the report of the Committee on Manufactures presented 
all the reasons for this amendment. They were not convincing to the 
Committee on the Judiciary. Their report touched not the form of 
the proposed amendment; not because that was unobjectionable, but 
because they opposed the substance of the change. Nor did their 
report elaborate the reasons which induced the conclusion. Suffer 
me, therefore, to present my views in answer to the original report in 
its favor. 

The first reason therein given is that, under the invalid legislation of 
1870 the United States has registered 7,785 trade-marks, taken from 
their owners therefor $211,750, gave them in law nothing therefor, 
as the pretended protection was void, and that that money must be 
paid back or the trade-marks made good by amending the Constitution 
and then passing a ratifying law. To say nothing of such awkward 
reasons for amending our organic law, let us content ourselves by 
saying it is cheaper to pay back the money than to have Congress and 
three-fourths of the States talk over and pass the amendment. 



FOETY-SIXTH CONGEESS. 445 

The second reason is that this is necessary, that we may keep our 
treaty obligations. It appears what those treaties are, and that they 
required no legislation on the part of the United States, that foreign 
manufacturers and merchants so understood, and that the act of 1870 
was passed because it was thought best to systematize in statutory 
form the common law on the subject. Up to this day only three 
hundred and seventeen foreign trade-marks are registered in this 
country. This number hardly justifies the high-sounding periods 
used by the trade-mark advocates about keeping treaty faith. 

But suppose it was all otherwise, suppose the treaties were not 
authorized by the Constitution. Is it not an astounding proposition 
that it is necessary to amend our Constitution to carry out a treaty ? 
Who makes treaties on behalf of the United States? The President, 
by and with the advice of the Senate, two-thirds of those present con- 
curring. He and all of them are bound by oath to support the Con- 
stitution, and a treaty not authorized by the Constitution is no treaty; 
it is ultra vires and void. Every foreign nation contracting with our 
Government knows that our President is not our sovereign, but our 
servant; that neither he nor any other constitutional officer of our 
Government has any authority beyond that granted in the Constitu- 
tion, and they all recognize the rule as expressed by Story on Agency, 
section S07a^ namely: 

In respect to the acts and declarations and representations of public agents, it would 
seem that the same rule does not prevail which ordinarily governs in relation to mere 
private agents. As to the latter (as we have seen) the principals are, in man}^ cases, 
bound, when they have not authorized declarations and representations to be made. 
But in cases of public agents the Government or other public authority is not bound 
unless it manifestly appears that the agent is acting witfdn the scope of his authority, 
or he is held out as having authority to do the act, or is employed in his capacity as 
a public agent to make the declaration or representation for the Government. Indeed, 
this rule seems indispensable in order to guard the public against losses and injuries 
arising from the fraud or mistake or rashness and indiscretion of their agents. 

If any one has treated with us under a mistaken notion of the power 
of the President in this regard, all such a one can ask is to be released 
from the contract made by mistake, and we will, on request, consent 
to such release without question. But the doctrine that if the treaty- 
making power has exceeded its authority we must enlarge the power 
of attorney or be faithless is monstrous. 

There is no necessity for such legislation. Mr. Cleveland, of New 
Jersey, while discussing this bill in 1870, admitted that the courts of 
England and this country had ' ' so construed the law (common law) as 
to protect manufacturers as well as the public." (Globe, 91, p. 2857.) 
When the bill went before the Committee on Patents in the Senate 
they ordered all this matter stricken out as unnecessary and ''a new 
departure" not fit to be made. Mr. Willey, in reporting the bill, said 
his committee had "thought that under the common law every man 
had a right to his own trade-mark and could protect himself." (Globe, 
83, p. 4821.) Mr. Sumner said the bill had "put into the text of a 
statute rules and principles which have been matured at the common 
law and recognized by our courts, but which have new character and 
value and explicitness by being set forth in the statute." (lb.) 

Mr. Carpenter said: 

They are wholly unnecessary at the common law, and so far as the rights of our 
citizens are concerned in England [and of course here] they are mere surplusage, the 
common law covering all that would be covered by these sections. (Ibid.) 



446 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

It is claimed that the States can not adequately protect trade-marks. 
Why not? Their judges are as honest and as learned in the law as 
those upon the United States benches. The jurors, if different in the 
two courts, are not better in those of the Federal courts; in some 
parts of the country they are much below the State standard of intel- 
ligence and virtue. States' officers are more numerous, and equally 
faithful; their courts more numerous and more accessible; justice can 
be had cheaper and quicker in the State courts. 

But it is said the State laws are inharmonious and conflicting. Is 
that true ? Certain States have special industries. The manufactur- 
ing States protect their wares by patent rights and State statutes suit- 
able to their condition and peculiar circumstances. How many using 
trade-marks are also covered by the patent law I know not. The 
examiner of trade-marks could not inform me. He writes me that 
'••the medicine, tobacco, and whisky trades have registered, perhaps, 
one-third of the whole number;" and the States noted for these Indus 
tries may, he thinks, be credited with the larger proportion of the 
registration thus far effected. Massachusetts specially protects 
watches. Some of the Western States do the like as to beer, etc. 
With these exceptions examine the following statement of the statutes. 
The dates sometimes do not go back far enough, for they come from 
the codes and not from the original acts. 







Punishment in jail 


or by fine, show 


ng extent of, in each. 


Date. 


State or Terrilory. 


Number of momhs and amount of fine. 


1872 


California.... 


6 months or $500, or both. 


1875 


(1847) 




1877. 




Dakota 


V2 months or $500, or both. 


1873 


Iowa 


6 months or $200. or both. 


1871 


M iine 


12 months (not less) or $200 (not less). 


1859 




1863 . . 


Michigan 


6 months or $1 000 or both. 


1866 


Missouri 


3 to 12 months and $500 to $5,000 fine. 


1865 


Nevada 


5 to 30 davs and $25 to $500 line. 


1877 




6 months or $100. 


1850 


New York. . . . 


12 months or $5 000. 


1859 


Ohio 

Oregon 


12 months or $500, or both. 


1864 ... 


months or $30. 


1869 


3 years and $100. 


1876 


Utah ' 


6 months or $300, or both. 


1873 


Nebraska 


1 to 20 years in penitentiary and $500. 

$200 fine. 


1874 


11 linois 


1873 


Illinois^ 


$5 each. 


1874 




$5 each. 


1874 


KentucJiy^ 


$5 each. 









Counterfeit beer kegs, etc. 



2 For cheating by false brand, $200. 



And in man}^ others, doubtless, cheating by false marks, etc., may 
be reached b}^ the criminal laws against cheating generally. In over 
half of these the date is since the act of Congress of 1870 was passed. 
Who will undertake to say why Alabama, Arkansas, Colorado, Dela- 
ware, Florida, Georgia, Louisiana, Marj^land, Minnesota, Mississippi, 
New Hampshire, Rhode Island, South Carolina, Texas, Tennessee, 
Virginia, Vermont, Wisconsin, and West Virginia have not passed 
such statutes '^ In all probability, but for believing the acts of 1870 
and 1876 sufficient, many of them might have made such laws. But 
they might not have thought the matter very important; for it 
appears (by absence of reported cases) that no one has ever sought to 
protect himself at law as to trade-marks in either of the States just 
named except Geoi'gia. In the States which have statutes on the sub- 



FOETY-SIXTH CONGRESS. 447 

ject is a fixed purpose to punish such crimes, and uniformity in the 
character of punishment and but little variet}^ in its quantum. 

And there is no evidence of any hostility to such laws nor indisposi- 
tion to make such laws in the States which have them not. 1 know not 
what States have the most trade-marks. From their affinity to patents 
and designs it is fair to presume that they are abundant when patents 
and designs abound. The South has few patents and designs; we are 
not manufacturers, but farmers. Alabama has but 61, being 1 to every 
16,344 of her population; Arkansas has but 28, being 1 to every 17,303; 
Florida has but 9, being 1 to every 20,916; Georgia has but 74, being 
1 to every 16,002; Louisiana has but 59, being 1 to every 12,321; Mis- 
sissippi has but 45, being 1 to every 18,398; South Carolina has but 
36, being 1 to every 19,600; Texas has but 142, being 1 to every 5,769; 
and Virginia has but 107, being one to every 11,450. 

On the other hand, look at some of the manufacturing States. New 
York has 2,556, being 1 to every 1,717; Connecticut has 504, being 1 
to every 945; and Massachusetts has 1,134, being 1 to every 403. 
Count out of Massachusetts the women and children and add her pro- 
portion of trade-marks, and there will be about one patent or design 
or trade-mark for every man in her borders. 

But it is not in those States of the South only where there are no 
such statutes. Neither Colorado, nor Minnesota, nor New Hampshire, 
nor Khode Island, nor Wisconsin, nor West Virginia has such laws. 

I do not underrate the importance of the trade on nonpatentable 
articles, in medicine, tobacco, or whisk}'. Nor will I stop to question 
the value of the trade-marks to their owners. I wiU not deny their 
value to the public, but there is less in that than is claimed. The 
mass of purchasers trust more to smell and taste in selecting medicine, 
tobacco, and whisky, or the like, than to trade-marks, so often and so 
easily imitated that they know not which is genuine. And if they 
can not test by their senses because of the goods being covered, etc., 
they trust to the responsibility of their merchant rather than to the 
manufacturers' pictures. Certain Turkish merchants ''having paid at 
Lyons for golden fabrics {by order of the Grand Seignior) unwittingly 
delivered brass to him. He beheaded them." So says Browne in his 
Law of Trade-Marks (p. 50) and warningly adds: ''Thus much for 
implicit faith in trade-marks." 

I admit that an identical law throughout the country would be very 
convenient for these parties. Uniform modes of conveying and hold- 
ing property during life and of disposing of it b}^ will might be con- 
venient. Some would like uniform rules for taking testimony, 
uniform actions for debts and injuries, uniform punishment for 
crimes and the like. But the system of our Government is different 
from that. 

The report by the Committee on Manufactures in favor of this 
amendment declares: 

It is the paramount interest of the Government to protect innocent purchasers of 
manufactured goods from deceptions, frauds, and countless impositions. 

That is not true. This Government has naught to do with the pro- 
tection of purchasers of manufactured goods. It ought not to have; 
that work properly belongs to the several States. 

That report adds: 

The interest and safety of all demand that it [power to protect trade-marks], 
along with the power of making war, peace, and treaties; of taxation, regulating 



448 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

commerce, and coining money; of granting patents and copyrights, should be vested 
in the General Government. 

Suffer me to call attention to this effort to give a dignity and impor- 
tance to trade-marks to which they are not entitled. The proposed 
amendment is for "the promotion of trade and manufactures," and the 
report claims that this trade-mark power should stand in the Constitu- 
tion with patents and copyrights. The Supreme Court in the case first 
cited said they were entirely distinct, and all recognize the distinction. 
The author spends a lifetime of seclusion and study that he may write 
a book. He is frequently not rich, but poor; not honored, but despised. 
A copyright but protects from piracy that which, while it may sup- 
port him, blesses his race. The scientist or inventor constructs in his 
brain what no other mind can produce. To perfect his projects costs 
time and toil. To-day he is buoyant with hope, to-morrow in despair. 
Capital opposes his innovations; ignorance fights him. He may be 
driven from home, as was Fourdrinier from France, for inventing the 
paper-making machine, or Jacquard from Lyons, for improving weav- 
ing machinery. It is right that genius should be protected and rewarded. 
And yet so opposed were our fathers to monopoly that to these ben- 
efactors of mankind they gave constitutional protection only for "a 
limited time," in consideration of public use of their inventions, etc., 
in all future time. 

But what thought or study, what toil or risk, what care or expense 
to the capitalist was involved in such trade-marks as "the shirt," 
"exactly twelve yards," "Bismarck" (collars), "genuine Yankee 
soap," or "Mrs. Winslow's soothing syrup"? Why should they be 
protected and forever ? However, it may as well be forever, for there 
is no residuum of good to the public to be abandoned by their authors. 
Mark, 1 am discussing the names, not the things. If the things be 
worth protection they can have it under copyright or patent laws. 
Nor would I cast a slur upon trade-marks. I recognize their conven- 
ience and usefulness. But their friends make them painfully little 
by contrast when they class them in importance with the power of 
taxation by which governments live, with war power by which they 
defend life, and with the power of making peace by which that life 
is made useful and ennobled. 

I have been thus tediously arguing this proposition, not because of 
any fear of the passage of this resolution. But so important is sta- 
bility in our Constitution that I would not have public confidence 
jostled by even a considerable following for this proposed amendment. 
I trespass on your patience with a few familiar facts. The Constitu- 
tion was signed in September, 1787, ratified by eleven States by the 
middle of 1789, and later by North Carolina and Rhode Island. In 
1789 twelve amendments were proposed. The two first were rejected 
— one to limit representatives of the people and the other to prevent 
an increase of salaries of Members of Congress during their term of 
oflSce. It is a pity this last one was not ratified. The resolution pro- 
posing these amendments declared by preamble the reasons for them 
in this language: 

The conventions of a number of the States having at the time of the adoption of 
this Cojjistitution expressed a desire, in order to prevent misconstruction or abuse of 
its powers, that further declaratory and restrictive clauses shall be added, and as 
extending the ground of public confidence in the Government will best insure the 
beneficent ends of its institution. 



FOETY-SIXTH CONGRESS. 449 

And what were those amendments ratified? First, freedom of con- 
science, freedom of the press and of petition for redress of griev- 
ances; second, the right to keep and bear arms; third, no quartering 
of soldiers on citizens except by prescribed law; fourth, security of 
persons, houses, papers, and effects against unreasonable searches and 
seizures; fifth, sixth, seventh, and eighth, just compensation for prop- 
erty taken for public use, security of life, liberty, and property by 
jury trial, due process of law, moderate bail, aid of counsel, and 
speedy and open deliverance; ninth, ''the enumeration of certain 
rights shall not be construed to deny or disparage others retained b}' 
the people;" tenth, "the powers not delegated to the United States 
by the Constitution, nor prohibited by it to the States, are reserved 
to the States respectively or to the people." They were ratified by 
the several States within a year. 

The decision in Chisolm v. Georgia showed that under the Consti- 
tution a sovereign State might be destroyed by the Supreme Court. 
To prevent such possibility this eleventh amendiient placed the States 
above judicial jurisdiction. It was proposed in 1T94 and ratified in 
1796. The twelfth amendment fixed the mode of electing our Presi- 
dent and Vice-President and of ascertaining the result. It was ratified 
in 1804. I leave the history of facts which called for these amend- 
ments untouched. You know it well. I speak not of their weight and 
dignity. Such speaking would be wasted in this presence. 

Remember that no one of these amendments enlarged the powers of 
the General Government; they were to ''prevent misconstruction or 
abuse of its powers." They were "restrictive clauses" and their pur- 
pose was ' ' to extend the ground of public confidence in the Govern- 
ment." And thus the fair column stood, based on States and having 
for its capital the reserved rights of the States and the people, till 
after our late war. The thunder of cannon did not shake it ; fraternal 
blood did not stain its polish. There it stands to-day in all respects 
the same save that the thirteenth, fourteenth, and fifteenth amend- 
ments gave to the slave freedom and elective franchise and to the 
world a pledge of fidelity to our public debt. 

The difficulties thrown in the way of its amendment by the Consti- 
tution itself and the caution heretofore observed in touching its limita- 
tions should make us pause. A start in that direction is feared by all 
who love our dual system. The United States is strong enough. Let us 
magnify the States by an honest trust and generous confidence. Let us 
repeat for each: "The people of this Commonwealth have the sole 
and exclusive right of governing themselves as a free, sovereign, and 
independent State, and do, and forever hereafter shall, exercise and 
enjoy every power, jurisdiction, and right which is not or may not 
hereafter be by them expressly delegated to the United States of 
America in Congress assembled." 

These are brave words. Do you recognize the quotation? The 
Constitution which contains them contained every right guaranteed 
by the ten amendments just mentioned. Those words have stood' 
unchallenged for a century in the organic law of that grand old Com- 
monwealth whose breast was first bared to British lead at Concord 
and Lexington, which flashed defiance to British tyranny by the bold 
signature of John Hancock to the Declaration of Independence, and 
proudly boasts of that sentiment of her immortal son, ''Liberty and 
Union, one and inseparable, now and forever." 



450 EE VISION OF STATUTES RELATIl^'G TO PATENTS, ETC. 

Let us guard the system of our fathers; the system of sovereign 
States combined into a Federal Union; the authority of each, absolute 
in its sphere, working together for the good of the people. 

Two such silver currents when they join, 
Do glorify the banks that bind them in. 

I would not detract one iota from the dignity or the power of the 
United States. In all the attributes of nationality, to it delegated by 
the Constitution, it is a nation, but with no powers or duties not therein 
nominated. As such nation, in its orbit, it moves like the sun, grand, 
majestic, glorious; but out of its orbit, whether by force, legislative 
or judicial, centripetal or centrifugal, it makes of our system chaos 
and blazes but to burn. 



[House of Representatives, 2d session, April 27, 18S0, Cong. Record, Vol. 10, part 3, pp. 2795-2808.] 

TKADE-MAKKS. 

Mr. Cravens. I move that the House go to business on the Speak- 
er's table. 

The Speaker pro tempore. The clerk wOl report the title of the bill 
coming over as unfinished business. 

The Clerk reads as follows: 

A bill (H. R. No. 5088) to authorize the registration of trade-marks and protect 
the same. 



Mr. McCoiD. Mr. Speaker, in 1870 Congress passed a law creating 
a uniform and harmonious system of legislation on the subject of 
trade-marks. That law was supposed to be based on the clause of the 
Constitution giving power to Congress to legislate for the protection 
of patentable discoveries of individuals and copyrights of their pro- 
duction. That law existed until 1876, when it was amended by a penal 
clause making it much more efficient. Since that time it has been 
executed and trade-marks have been registered, certificates issued, and 
the business of the country in that regard has been conducted under 
the law of 1870. I believe nobody complained of the law or was dis- 
satisfied with it, either from the point of its interference with State 
legislation or any other; and it gave universal satisfaction, except to 
those pirates and infringers whose unlawful trade was defeated by it. 

Last October the Supreme Court decided the laws all unconstitu- 
tional, and when we met in December it appeared to me as a plain and 
practical way of getting over the difficulty in which we found our- 
selves by that decision of the Supreme Court to amend the Constitu- 
tion and get the power we thought we had in 1870 and 1876, and up 
to the decision of that court, and, under that power which we would 
get by an amendment to the Constitution, legislate as we had done 
before. 

The matter had been discussed over the country by the lawyers and 



FORTY- SIXTH CONGRESS . 451 

in the papers a great deal, and when we met, December 2, the reso- 
lution to amend the Constitution was introduced, and, as the gentle- 
man from Georgia [Mr. Hammond] says, was referred to the Commit- 
tee on Manufactures, the proper committee under the rules of the 
House. It was considered by that committee and unanimously re- 
ported, favorably recommending the submission of the amendment to 
the Constitution, and urging it with such reasons in brief as they 
had at the time. That committee having jurisdiction of the subject 
in the House, and having reported favorably as to the propriety of 
the amendment, this House has the unanimous report of the commit- 
tee to whom they have given jurisdiction on that subject; but when 
the resolution came up in the House for passage, the bill introduced 
by the gentleman from North Carolina [Mr. Armfield], reenacting the 
old law under another clause of the Constitution, was urged as all that 
was required. The question was raised in that discussion whether 
or not we had, by virtue of the power to regulate commerce in the 
Constitution, power now, without an amendment, to pass a similar law 
to that of 1870 and 1876. 

The constitutional question having been raised in the House, it was 
suggested that the matter be referred to the Committee on the Judi- 
ciary, and to that I consented; and it went to the Committee on the 
Judiciary on the subject, as I understood it and, as I think, the House 
understood it, of the constitutionality of the Armfield bill; that is, 
whether or not Congress can now legislate on trade-marks without an 
amendment under the commerce clause of the Constitution. 

The Committee on the Judiciary have finally reported, and in their 
report they say that Congress has not the power, under any general 
clause of the Constitution, to legislate on the subject, and I understand 
the gentleman from Georgia [Mr. Hammond] to say that the Com- 
mittee on the Judiciary are unanimous in the opinion that Congress 
has not the power, under the commerce clause, to pass this kind of 
legislation. 

That committee has recommended the bill which is reported and 
asked for its passage. I will, therefore, first discuss that bill. 

I think, Mr. Speaker, this bill is not one this House wants to pass, 
for several reasons. It is entitled "A bill to authorize the registra- 
tion of trade-marks and to protect the same." The first clause says, 
"Trade-marks used in commerce with foreign nations and with the 
Indian tribes." The first objection to the bill is this: The committee 
which reports it says we have no power to legislate under the com- 
merce clause, and yet the bill proceeds at once to say "used in com- 
merce." That is in the first section; and in the third section they use 
the same language, with this additional clause, "Within the provis- 
ions of a treaty, convention, or declaration with a foreign power." 
The idea seems to be in the committee to place the bill itself under the 
commerce clause, while in their report they expressly say that Con- 
gress has no such power. I only notice that, and leave it, to show the 
doubt of the Judiciary Committee where this power exists if at all. 

I take it on their own ground. I understand the gentleman from 
Georgia and the Judiciary Committee to say this, that we have no 
power to legislate on trade-marks, but that under the treaty power 
and the provision of the Constitution which says we shall make all 
needful legislation for the execution of the power given to the Presi- 
dent to make treaties, we may pass this bill. Now let us see. The 



452 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

chain of title of constitutional power is this, as I understand it, that 
the President can make a treaty according to a certain clause with 
regard to trade-marks, and it is necessary for Congress to legislate to 
execute the things to which the President has agreed to. I believe that 
is the theory of the gentleman from Georgia. 

In order, therefore, that this Congress should be enabled to pass a 
bill on this subject they must first find that the President and the Senate 
have made a treaty under the Constitution by which they agree to do 
certain things in reference to these trade-marks, and next that we 
have the power under the general provisions of the law to execute 
that treaty and legislate for the things which are agreed upon therein. 
Now, if that is the position of the Judiciary Committee I want to ask 
a few questions of some of its members. They say in this bill that 
they pass it for the execution of treaties with foreign nations and with 
the Indian tribes. That is the claim set forth by the gentlemen in 
advocacy of this bill. 

Now, Mr. Speaker, I desire to ask the gentleman from Georgia, or 
any other gentleman on the Judiciary Committee, what treaty pro- 
vision has been made with the Indians in which it is necessary for Con- 
§ress to pass such a bill as this at all ? Has the President of the United 
tates made a treaty with the Indian tribes agreeing to protect their 
trade-marks, or has he made a treaty with the Indians agreeing that 
they shall protect our trade-marks? Unless that treaty has been made 
we can not pass the bill under the very conditions specified in the report 
from the Judiciary Committee itself, for they say that we must first 
have a treaty and then Congress may pass laws to execute the same. 
Now, I claim that there being no treaty with the Indians in reference 
to such protection of trade-marks, we have not the power to pass such 
a bill; and I ask the gentleman from Georgia if he can not legislate as 
between the States how can he legislate as to trade-marks with the 
Indians ? I would like any gentleman on that committee to state any 
reason or how we can legislate if there is no treaty with the Indians in 
this respect, and if the Indian has no trade-mark. As I understand it 
the trade-mark of the Indian is ordinarily a lifted scalp, and generally 
it is impressed on the head of the white man; that is at least one in 
which thej^ have the right of priority of use. 

Under that reasoning of the Judiciary Committee to which I have 
alluded the power to legislate as to the Indians falls to the ground, 
and may be disposed of without further comment. They therefore 
admit, so far as this bill is concerned and with reference to the 
Indians — and this report shows it — that that portion of the bill is 
unconstitutional, and, of course, we can not pass it if there is no treaty 
whatever regarding it. 

Now, with reference to treaties with foreign nations, Mr. Speaker, 
I do not understand that we have any treaty with foreign nations that 
would justify or make it necessary to pass such a bill as this. In the 
first place, our treaties with reference to trade-marks never con- 
templated such a state of affairs as this bill would create. The only 
treaties with foreign countries in which protection was promised prior 
to 1870 were the treaties with ]^ussia and with Belgium. 

In those treaties we agreed that counterfeiting the trade-marks 
should be " strictly prohibited. " The counterfeiting of trade-marks 
was prohibited at that time by the common-law provision, and being 
against the principles of the common law which recognized the right 



FORTY-SIXTH CONGEESS. 453 

of property in trade-marks the violation of that right would come 
within the provision of the treaties, and the parties injured would 
have had remedy in damages. They would have had that remedy 
under the common law. These two words of treaty obligation are 
not sufficient to justify an argument for this bill. It is doubtful 
whether any more was intended by the contracting parties than the 
guaranty of protection at common law. 

These two treaties are the only ones with reference to trade-marks 
on which the right to legislate could be claimed that had been made 
before 1870. In 1870 we did pass a general trade-mark law, and the 
^President and the/ Senate when they made treaties understood that we 
had the power to legislate upon trade-marks as a Government, and 
when we agreed to protect foreign trade-marks it was upon the sup- 

Eosition that we had the power to pass a general law. If we did not 
ave at that time constitutional power to do that, that part of ^he 
treaty was simply void, because we had not the power to make a treaty 
if we had not the power to legislate for its execution, and what this 
Government did after that agreeing to protect trade -marks was done 
under a misapprehension and we are not bound by it. 

Foreign governments are presumed to know that this Government 
is one of limited powers, having only those powers which are conferred 
on it in the Constitution, and to know and recognize the extent of those 
powers as well as we, so that in justice and equity we would not be 
bound to pass any law for the protection of foreign trade-marks only 
so far as power existed at the time the treaties were made to enact 
laws for their execution. But if that is true, then we are not morally 
or in justice bound to any foreign government to pass such legislation, 
which gives the preference to foreign citizens over our own. But if 
gentlemen upon the Judiciary Committee base this legislation, as they 
say they do, and are unanimous in that, upon treaties with foreign 
nations, they must first have a treaty and then legislate to execute it. 
Now what is the fact? We have now in existence treaties with for- 
eign nations upon this subject, namely, with the Argentine Confeder- 
ation, with Austria, with Belgium, with Brazil, France, the German 
Empire, Great Britain, and Russia. With all other foreign nations 
we have no treaty, and yet gentlemen ask us to pass a general law 
which will cover all nations who may, through their citizens, ask pro- 
tection of our laws. They do not limit it to those with whom we nave 
treaty obligations on the subject. 

We have no such treaties with Bolivia, with Chili, with China, with 
Colombia, with Denmark, with Mexico, with Japan, with Spain, with 
Switzerland, and other nations. And yet under the provisions of this 
law the citizens of all these nations with whom we have no treaties 
whatever could come here and claim protection of their trade-marks 
in our courts. 

The Judiciary Committee say we could not pass a law or legislate on 
the subject as regards these nations with whom we have no treaties, 
because we have not the power, except where necessary and proper 
to execute treaties, and such legislation, therefore, would be void. 
So that the law is unconstitutional so far as it legislates for foreign 
nations which have no treaties with us on the subject, as well as being 
void as to the Indians. 

Now, as to Congress getting power to legislate upon the subject at 
all through the treaty power, I put this question to the Judiciary 



454 EEVISION OF STATUTES EELATING TO PATENTS, ETC. 

Committee: Admitting that Congress has no power to legislate upon 
the subject of trade-marks for our own citizens and internally, can Con- 
gress get more power by virtue of a treaty than it now has ? Can a 
treaty with a foreign Government grant to Congress a power it has not 
without the treaty to legislate internally and affecting our own citi- 
zens ? The Judiciary Committee have expressed no opinion on that 
subject and do not enter into a discussion of it; but it seems to me 
the gravest question connected with this bill. Even admitting we had 
the treaties by which we had agreed to protect foreign trade-marks 
by national legislation, can we get the power to legislate on that 
subject, affecting the internal relations of our citizens in trade and 
commerce, the domestic relations, the police and State regulations, 
and rights and remedies, as the Judiciary Committee say? Can we 
get that power by virtue of a treaty 1 

As regards that question I believe this to be a correct principle of 
law: A treaty does not confer upon Congress a power to legislate as 
between persons in the State, whether citizens or foreigners, in their 
internal commerce where that power does not exist, without such 
treaty, incidental to some general power. But a treaty agreeing to 
legislate in such cases by controlling the transactions between foreign 
citizens and the people of the United States is void. I refer the com- 
mittee and the House to the following brief upon that subject: 5 
McLean, 348; 10 Pet., 362; 2 Cranch, 358; 4 Wheat., 316; Story on 
the Constitution, third edition, sections 1508, 1519; also sections 1243 
and 1244: 

[Extracts froiii debates on the sixth article of the Constitution, to be found in Elliott's Debates, vol- 
ume 3.] 

They can by this make no treaty which is repugnant to the spirit of the Consti- 
tution or is inconsistent with the delegated powers. — Speech of Governor Nicholas, of 
Virginia, page 508. 

Though the king can make treaties, yet he can not make a treaty contrary to the 
constitution of his country. — Speech of Governor Mason, of Virginia, page 514. 

The exercise of the power [to make treaties] must be consistent with the object of 
the delegation. 

* * -Sfr * * * * 

The object of treaties is the regulation of intercourse with foreign nations, and is 
external. I do not think it possible to enumerate all the cases in which such exter- 
nal regulations would be necessary. ^ ^ * Would it not be considered as a dan- 
gerous principle in the British Government were the King to have the same power 
in internal regulations as he has in the external business of treaties? Yet, as among 
other reasons it is natural to suppose he will prefer the interest of his own to that of 
another country, it is thought proper to give him this external power of making 
treaties. This distinction is well worthy of the consideration of gentlemen. — Speech 
of Madison. 

Suppose we had no general law of the United States, would the 
President ever have made such treaties ? 

The act must be for the means requisite and fairly applicable to the 
attainment of the end of some other express power granted. (Story, 
section 1245.) 

If we had the power to legislate for the registration and protection 
of trade-marks under any clause of the Constitution, then it would be 
within the power of the President to make a treaty for a reciprocity 
in international legislation. And it would be within the discretion of 
the Legislature to make such laws as should be necessary and proper 
to carry into execution his treaty. 

Especially do I refer gentlemen to the case in tenth Peters, case of 



FOETY-SIXTH CONGRESS. 455 

New Orleans against the United States. The question was as to the 
United States having power to control the quays of New Orleans. 

Under the King of France before we received that territory the sov- 
ereign had that power to niake all the regulations. Under the King 
of Spain it was the same. And when the territory was ceded to us by 
treaty they ceded to us the same sovereign power over that territory 
that they had. The question arose in 'this case whether or not under 
that treaty the United States Government got the power to control 
these quays. The decision is in tenth Peters. I read from page 736 
of that report. The Supreme Court say that the government of the 
quays would be a police power; and then they say this: 
The Government of the United States as was well observed in the argument — 
This case was argued by Webster on the part of New Orleans — 

is one of limited power. It can exercise authority over no subjects except those which 
have been delegated to it; and — 

Notice this sentence — 

Congress can not by legislation enlarge the Federal jurisdiction; nor can it be 
enlarged under the treaty-making power. 

That is just the point I make, that the power of Congress to legis- 
late upon subjects over which the general clauses of the Constitution 
do not give them power can not be increased by a treaty. And the 
gentleman from Georgia [Mr. Hammond] has found no decision, and 
I presume the Judiciary Committee have been diligent and have 
searched the reports and have given us all the authority by which 
they sustain this power, yet they have found no decision but one; and 
I wish to call the attention of the House to that. The gentleman 
from Georgia supports this legislation by that reference alone. He 
says this: 

Congress has * ' power to make all laws necessary and proper for carrying into exe- 
cution the foregoing powers and all other powers vested by the Constitution in the 
Government of the United States or in any department or officer thereof." (Article 
1, section 8, Constitution.) Congress, though powerless in this regard under the com- 
merce clause, may so legislate in aid of the treaty-making power. This idea is fully 
illustrated and sustained by the Supreme Court in United States v. Coombs (12 
Peters' s Reports, 78.) 

You observe the gentleman says that the idea that we get this power 
from the treaty-making power is fully illustrated by the Supreme 
Court in this case: 

The question was, whether certain obstructions to commerce, not at sea nor within 
tide-marks, but on land, could be punished by Congress? The court said — 

And here he quotes the decision of the court — 

^ ** Any offense which thus interferes with or obstructs such commerce and naviga- 
tion, though done on land, may be punished by Congress under its general authority ^^ — 

And the gentleman italicizes these four words " under its general 
authority " — 

"to make all laws necessary and proper to execute their delegated constitutional 
authority." 

And I would italicise those words. They make all laws necessary 
and proper under the general authority to execute tJieir delegated con- 
stitutioiial authority. Nothing else. They must have delegated con- 
stitutional authority first. Then under this general clause they may 
execute that appropriately to the end intended. 
S. Doc. 20 30* 



456 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

But the gentleman from Georgia is mistaken when he says the 
Supreme Court put that decision upon the treaty-making power, and 
the Committee on the Judiciary, if they place this legislation upon 
this decision in twelfth Peters, are mistaken as to where the power 
rests. 1 read from that decision, page 78: 

j But we are of the opinion that un^er the clause of the Constitution giving power 
! to Congress to regulate commerce with foreign nations and among the several States, 

Congress possesses the power to punish offenses of the sort which are enumerated in 

the ninth section of the act of 1825, now under consideration. 

It was not the treaty-making power under which they said we had 
this authority, but it was the power to regulate commerce with for- 
eign nations. If the gentleman will read this decision carefully he will 
find that they said we had not the power under the judicial jurisdic- 
tional clause, that it was not a maritime offense; but that we had the 
power under the clause to regulate commerce. They did not place it 
upon the treaty-making power at all. We do not derive from the 
treaty -making clause the power to punish for offenses outside of those 
committed on the high seas and in the tide waters. I ask gentlemen 
of the Committee on the Judiciary to show me one sentence in that 
decision where the court placed this authority under the treaty-making 
power, or making the case favorable to this principle announced in 
their report. It is directly against them, for the court sought and cited 
a general clause of the Constitution under which Congress could claim 
the power, and did not rely on the treaty. 

The expression of the Supreme Court in 10 Peters is not contro- 
verted, and I do not find a decision anywhere, and the Committee on 
the Judiciary have not found any, which states that Congress gains 
any such power under the treaty-making clause. That is the only 
decision which the gentlemen of that committee have cited, and they 
say it fully sustains the power of Congress under the treaty-making 
authority. And we see it, in fact, is against them. 

1 desire to call the attention of the House, and of the committee 
that made this report, to the following principle laid down in Kent, 
eleventh edition, page 266: 

If the end be legitimate and within the scope of the Constitution, all means which 
are proper and plainly adapted to this end, and which are not prohibited, are lawful. 

This is the extent, and the full extent I claim, to which Congress 
can go under that power. But the members of the Committee on the 
Judiciary themselves say that the end herein sought to be attained is 
not within the scope of the Constitution, the end being legislation on 
the subject of trade-marks. That committee has expressly said that 
the Constitution does not give any power to Congress to do that thing; 
that no power is given to the General Government by the Constitution 
to regulate trade-marks; that there is no express power in the execu- 
tion of which the regulation of trade-marks is expedient, useful, or 
conducive to the end to be attained in any general power; that con- 
trol of the subject is left to the States. 

They say that it is not contained under the commerce clause, the 
patent clause, or the copyright clause. They might have placed it 
finally under the constitutional sovereignty power. They might have 
said that under the sovereignty of the United States this power uiight 
rest in its dealing with other sovereigns; but they put it nowhere in 
any constitutional power to be found within the scope of the Consti- 
tution. 



FOETY-SIXTH CONGRESS. 457 

Now I ask those gentlemen, and especially the gentleman from 
Georgia [Mr. Hammond], whose brilliant peroration on the subject 
of State rights closed his argument, this question: Should the Presi- 
dent and Senate by treaty agree that none but Rhine wines should be 
sold in the United States, that, in the language of the treaty, ''all 
others should be strictly prohibited," does the gentleman believe that 
Congress would have the power to legislate to execute that treaty? 
And if he does not believe that, will he point out to me wherein such 
a power to legislate would differ from that claimed in the present case, 
giving preferred rights and remedies to foreigners as between them 
and Ainerican citizens ? 

If the President and Senate should by treaty agree that the sale of 
all but foreign steel rails should be "strictly prohibited" in the 
United States, would the gentleman say that it is our duty to legislate 
to execute that treaty, and that Congress gained the power to do so 
because the treaty required it? If he can say so in the present 
case, he can as well say so in that; because he says that the treaty 
alone is the grant of power to Congress, that otherwise Congress would 
not have the power. 

Suppose that the President and Senate should make a treaty pro- 
viding that the sale of all but Havana cigars should be "strictly pro- 
hibited " in the United States. Would that confer upon Congress the 
power to legislate to execute that treaty, and to strictly prohibit the 
sale of all other cigars? If it would not, would power be conferred 
upon Congress by a treaty to protect foreign trade -marks and not our 
own? It seems to me that the Judiciary Committee, although they 
had this subject under consideration a long time, with instructions to 
report it as soon as possible, have certainly not reached the bottom of 
the subject in reporting and recommending a bill of this character. 

Passing from the constitutional question, let me examine for a 
moment the practical question. If treaties are made requiring the 
Government to legislate in a certain way in harmony with foreign 
Governments, it would still remain a question with the legislative 
branch in their discretion whether they ought so to legislate. It would 
remain with them to decide whether they would do this thing which 
the President has agreed shall be done. We are the legislative branch, 
on which alone this power is conferred by the Constitution. It is 
within our discretion to determine whether we will pass the legislation 
which the President has stipulated shall be passed in any treaty. 

Now, supposing you had the power, I ask whether in the exercise 
of that discretion you would favor the passage of this kind of a bill ? 
Let us see what it is. Under this bill foreigners are to be protected 
by national legislation against infringement of their trade-marks. 
Under this bill they may go to United States courts for their reme- 
dies, both civil and criminal. They may there ask for damages; they 
may there ask for injunctions; they may there ask for search warrants 
to hunt out and destroy all implements supposed to be in the hands of 
any person for the purpose of infringing or pirating upon their trade- 
marks. 

Under this legislation, if it should pass, you might find in our United 
States courts two persons standing at the bar of justice. One happens 
to be a Frenchman, a German, a Russian, or a Turk; the other hap- 
pens to be an An\erican citizen. The one invokes the power of that 
court to give him judgment for his damages, and he gets it: the other 



458 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

is refused. One asks for a seach warrant to hunt out and destroy sus- 
pected implements by which his trade-mark may be counterfeited. He 
gets it, while a similar application made by the other is refused. One 
goes into the United States courts under the criminal laws and prose- 
cutes to punishment by the severest penalties of fine and imprisonment 
any man attempting to counterfeit nis trade-mark; the other stands 
alone in that court without remedy. One, as against a citizen of the 
States, may sue in the United States courts; the American can not. 
One produces a United States certificate of registration, which is the 
prima facie evidence, from Maine to Alaska, of his ownership, upon 
which he readily wins his case; the other can not, but is left to grope 
in the long past to prove his prior use of his mark with all the diffi- 
culties of finding the evidence which time has swept away. 

When that lone man rises up and asks, ''Why am I not here with the 
same rights that these other men have?" you will see the Frenchman 
under his flag, the German under his flag, the Briton under his flag, 
the Russian or the Turk under his, pointing at him and saying, "You 
are an American cititzen; by that misfortune you have under the leg- 
islation of your own Congress no rights here; we are preferred to you 
in every respect." 

Mr. Speaker, for these several reasons I say this bill ought not to 
pass. 1 hope it will not receive the support of this House, nor even 
the support of the Judiciary Committee. First, it is unconstitutional, 
because it legislates for trade-marks in commerce with the Indians, with 
whom there is no treaty providing for such protection. Next, it under- 
takes to give the same protection to foreign nations with whom we have 
no treaties on the subject, and by the reasoning of the Judiciary Com- 
mittee itself this legislation falls to the ground with reference to such 
nations. Next, as to foreign nations with whom we have treaties on 
this subject, those treaties were made under a misapprehension of our 
power as a nation, under the supposition that we had the authority to 
pass such laws as were passed in 1870 and 1876 — legislation which we 
supposed until last October had full force. The treaty-making power 
in making these treaties acted under a misapprehension; and the 
immutable principles of justice require that no man or government or 
society shall be prejudiced by what has been done under a misappre- 
hension of that kind. 

But supposing these treaties to be in full force, to have been made 
with full knowledge of their effect, that would not confer upon Con- 
gress any additional power not within the scope of the Constitution. 
It would be disastrous for us to adopt the principle that any treaty 
made by the Executive can increase the powers of Congress. 

This bill does not refer to external matters. Treaties relate to 
external matters between sovereigns. This bill goes into internal mat- 
ters between citizen and citizen. Why, sir, you will find in this bill a 
provision that between citizens of the States this bill applies. When 
they are citizens of the same State, and the trade-mark in controversy is 
intended to be used for foreign commerce, this bill gives them all these 
rights as against every other citizen of the State. It undertakes to go 
into the State, and as between citizens of that State give them rights 
as above all others, if their trade-mark is intended to be used m foreign 
commerce or with the Indian tribes. All through the bill affects 
citizens of the States. If two men are engaged in ordinary traffic — 
in the grocery or any other business — in a State, this bill steps in 



FOETT-SIXTH CONGEESS. 459 

and affects the one without affecting the other, because of the trade- 
mark which happens to be on some of the goods. 

Again, I object to the bill and hope it will not pass because if it 
were constitutional, if we had the power to pass it, if we could get 
this power from a treaty, it would not be a just and righteous law 
but would be an anomaly and an outrage upon the American statute 
book. The result would be that any American owning a trade-mark 
would be driven to assign that trade-mark to a foreigner and then 
come back under a foreign flag to get protection. If I had a trade- 
mark and wanted to have it protected by the United States courts 
under the provisions of this bill in the interstate commerce of the 
country, I would immediately assign it to some German, Frenchman, 
or some other foreigner, and then come back under the foreign flag 
and ask for my rights under this bill because I could not get them 
under my own flag. 

This is not the way foreign nations do. We have treaties with 
Germany, and treaties with France, and they do not treat their citi- 
zens in this way. In violation erf their treaties to-day on the statute 
books, France has this provision: The nineteenth article provides 
that all foreign products bearing the mark or name of a manufac- 
turer resident in France, or the name or the place of a French factory, 
shall be excluded from France or seized. That is the way they do 
there. If an American comes with goods with the stamp of their 
factory on them they are excluded and can not come into the ports of 
that country, and are seized and confiscated. Yet you say, in opposi- 
tion to that, they may come here and ours shall not compete with 
them in the commerce of this country under your legislation. 

Take Germany. How does she treat her citizens under the treaty 
which says our citizens shall have the same rights as her own sub- 
jects? Section 13 of her trade-mark law is as follows: 

Every native producer or trader who has received protection or authorization for 
his trade-mark may, in the event of another unlawfully making use of the same 
or the name of his firm, in virtue of this law enter an action against any person so 
doing in order to obtain a legal decision that he is not entitled to make use of such 
trade-mark. The producer or trader may likewise prosecute any person who unlaw- 
fully exposes or keeps for sale any goods unlawfully marked with the complainant's 
trade-mark; that the person so doing may be judicially declared unauthorized to 
expose or keep for sale any goods so marked. 

Mr. Hammond, of Georgia. Will the gentleman allow me to ask 
him a question? 

Mr. McCoiD. Yes, sir. 

Mr. Hammond, of Georgia. When the treaty comes in and says the 
foreigner shall have the same rights as the native, does not that make 
it practically read native or foreigner? 

Mr. McCoiD. If the gentleman will examine he wiU find this is a 
law made after the treaty, and not before it. 

Mr. Hammond, of Georgia. The treaty is that each foreigner shall 
have in the country of the other the same rights that the citizen has 
at home. Therefore you legislate for the citizen, but you treat for 
the foreigners. 

Mr. McCoid. Not at all. It is necessary for that nation under the 
treaty to legislate and execute it. They do not get rights which 
require legislation to create by a tre^aty; they only get them by legis- 
lation under the treaty. Does the gentleman say as a legal principle 



460 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

that a treaty is law, where it requires legislation, without that legis- 
lation? 

Mr. OsMER. They get recognition by the treaty. 

Mr. McCoiD. Yes; they get recognition by the treaty and the Gov- 
ernment then enacts the law to give them the remedy. But a treaty 
agreeing to certain rights and remedies does not become a law with- 
out the legislation to carry it out. Now, under their legislation after 
the treaty, they have in Germany enacted what I have read in sec- 
tion 13. 

I say I object to this bill because it gives the foreigner preference 
over our own people, and, for one, I do not want to place our citizens 
in any such relation. I object to it for its want of reciprocity, for it» 
want of mutuality; I object to it on the ground that we do not I ^ve 
the same rights and can not give the same rights to American citizens 
under our laws which we give to them. I know very well we would 
like to do so. I know gentlemen say we would go to the extent of 
our power, but we do not do it because we have not the power. I say 
we had better wait until by grant of power from the States we can 
make a law which will be uniform, and harmonious, and equitable^ 
and just both to our own citizens and to foreigners. 

CAN TRADE-MARKS BE PROTECTED UNDER PATENT LAWS? 

Now, Mr. Speaker, there is one other point which is spoken of in 
the report of the Committee on the Judiciary, and which was referred 
to by the gentleman from Georgia [Mr. Hammond] in his remarks. It 
is there said under the patent laws patented goods may be protected. 
In that I think the committee is entirely mistaken. The Judiciary 
Committee in saying that trade-marks may be protected under the 
patent laws must have forgotten that there is no analogy between them 
whatever. Although the patent laws require the name and date of 
the patent to be put on goods, there is no trade-mark in it. It has no 
reference to trade-marks. 

On this subject I took the liberty of submitting certain interroga- 
tories to the Commissioner of Patents, and I ask the Clerk to read 
those interrogatories and the reply which I received to them from the 
Commissioner. 

The Clerk read as follows: 

"Washington, D. C, April £0, 1880. 

Dear Sir: In the determination of the necessity and practicability of national legis- 
lation upon the subject of the protection of trade-marks as between citizens of States, 
and a constitutional amendment under which such legislation may be had, it becomes 
important to know whether — 

First. Under the power of Congress of securing for limited times * * * to 
inventors the exclusive right to their respective * * -^^ discoveries (article 1, sec- 
tion 8) , and to give such protection, and under which Congress has forbidden any- 
one to ' ' mark upon anything made, used, or sold by him for which he has not obtained 
a patent the name or imitation of the name" of the patentee, or to put "patent," 
"patentee," or "letters patent," or any word of like import with intent to imitate or 
counterfeit the mark or device of the patentee without his consent and prescribed as 
penalty for a violation (Revised Statutes, section 4900) , trade-marks are or may by 
further legislation be sufficiently protected on patented goods? 

Second. Whether State legislation is sufficient to protect interstate trade-marks? 

Third. The propriety of protecting foreign trade-marks by national legislation, and 
leaving domestic trade-marks without any such direct legislation? 

Fourth. Why, if under patent laws trade-marks on patented goods may be suffi- 
ciently protected for our citizens, they may not also for foreign citizens? 



FOETY-SIXTH CONGRESS. 461 

Fifth. What conflicts or confusion would result from State legislation and national 
legislation as to trade-marks under treaties? 

I respectfully request you to give your views on tliese questions and such facts as 
in your opinion sustain them. And also the results of national protection under late 
laws now declared unconstitutional. 

Very respectfully, your obedient servant, 

M. A. McCoiD. 
To the (Commissioner of Patents. 



■ Department of the Interior, 

United States Patent Office, 
Washington, D. C, April ^1, 1880. 

Sir: In reply to your informal inquiries, relating to trade-mark legislation, I have 
the honor to state — 

First. That there is no such relation between trade-marks and patents and patent- 
able inventions by which the provisions of the existing laws relating to patents can 
be applied to the protection of trade-marks. 

The United States Supreme Court in the Steffens case having expressly declared 
that the clause of the Constitution relating to protection to be given authors and 
inventors to their respective writings and discoveries can not be construed to extend 
to trade-marks, it would necessarily follow that any amendment of the patent laws 
(which derive their validity from such clause of the Constitution) intended to affect 
the matter of trade-marks would to that extent be invalid. 

Second. Section 4900, Revised Statutes, to which you have called my attention, is 
mandatory in requiring patentees to mark their articles as patented, together with 
the day and year the patent was granted, as notice to the public, and as a prerequisite 
in maintaining any suit for infringement, except on proof that the defendant was' 
otherwise duly notified. But the announcement which that section requires to be 
made on patented articles can in no way be construed as a trade-mark. The United 
States Supreme Court, as well as other courts, both in this country and England, 
have repeatedly held that the mere announcement of a fact upon an article of manu- 
facture, or the use merely of a generic name, consisting of the name of the manufac- 
turer, or words to denote quality, or the time and place of manufacture, are not 
proper subjects for a trade-mark under the common law. And it has also been held 
that after the expiration of a patent the public generally, in manufacturing the arti- 
cle, are entitled to use the name of the patentee to designate or identify such manu- 
facture with the one pre^dously patented. 

Third. The number of trade-marks heretofore registered in this ofiice, which 
amounts to between eight and nine thousand, is a very small part of the valuable 
trade-marks constantly in use throughout the country. But of late years the number 
of applications for the registration of marks at this office has very greatly increased; 
and from all that we can gather the principal reason seems to be that the legislation 
of the various States is so conflicting that no adequate protection could be afforded 
under the State laws, especially as to agents of foreign corporations, citizens of other 
States as well as of foreign countries using the same mark. 

There are a vast number of unpatented and unpatentable articles of manufac- 
ture of great value, protection to the manufacture and the sale of which by the orig- 
inal manufacturers can only be given by trade-marks, and the sale of which 
articles is in no wise restricted by State or national lines. The protection afforded 
to such manufactures when imported from foreign countries by treaty regulations, 
such as now exist relating to trade-marks, is extremely valuable, and their value is 
so apparent to every citizen of this country that it is very natural for them to desire 
the same protection that is thus afforded foreigners. Whatever protection is afforded 
foreigners under our patent laws is also already extended to citizens, and no further 
amendment to those laws is needed for that purpose. 

Fourth. One great advantage of the legislation by Congress on the subject of trade- 
marks has been the gradual adoption of a uniform system of adjudication by the 
United States courts in regard to the rights of the owners of trade-marks and the 
confidence which has been established with the public in all such matters that have 
come within the operation of Federal legislation and the adjudication of the Federal 
courts. Especially has this confidence been promoted by the penal protection 
afforded by recent legislation. 

Notwithstanding the recent decision of the Supreme Court in holding the trade- 
mark acts invalid, this office is receiving continually applications to the number of 
forty or fifty a month for registration; and where it is shown that the apphcants ar© 



462 EE VISION OF STATUTES RELATING TO PATENTS, ETC. 

aware of the said decision, which fact is required to be made evident in every appli- 
cation, registration is granted subject to the provisions of the law hitherto in force. 

I regret that the very short time given me to answer your inquiries has prevented 
a thorough consideration of the subject — a subject which is a much older one than 
that of patents and covers a far wider field. Patented articles are the product of 
inventive genius alone, and their production is confined to comparatively few, while 
trade-marks, in themselves also assignable personal property, are applicable to all 
articles of commerce, and may be adopted by anyone who wishes to distinguish his 
goods from hose made by another. 

Very respectfully, your obedient servant, 

W> H. DOOLITTLE, 

Acting Commissioner, 
Hon. M. A. McCoiD, 

House of Representatives. 

Mr. McCoiD. I have a brief on the subject supporting this statement 
which I will print without reading. After the expiration of a patent 
it becomes public property, and in that respect would not be patentable 
as a trade-mark. The words imprinted upon patented articles of manu- 
facture are common property after date of expiration of the patent. 
(The Locke Manufacturing Company v. Levi C. Boyington (October, 
1876), Official Gazette, Patent Office, volume 9, January- June, page 
455; Edleston v. Vick, 23 English Law and Equity Reports, Official 
Gazette, Patent Office, volume 14, page 270.) The office has hitherto 
refused to record such names as trade-marks, and the courts, ^^oth in 
'England and this country, have declined to extend protection to their 
use. In this case the vice-chancellor held that in the matter of "Tay- 
lor's patent pins," the patent having expired, everybody had a right to 
use that term. If that alone constituted the whole of the label, it was 
public property. 

C. E. Eichardson et al. (3 Official Gazette, 120) : The Commissioner 
refused registration of the words "A. Richardson's Union leather- 
splitting machine," on the ground that the words presented had become 
the generic name of the machines by which the public knew them. 

The Consolidated Fruit Jar Company (14 Official Gazette, 169): 
When by long usage the name of a person in designating a certain class 
of manufactures has become generic in its character, such a name is at 
common law not a lawful trade-mark. The Commissioner is prohibited 
by section 4939 from registering as a trade-mark the name of a person 
merely. While the owners of a patent have the right by virtue of such 
patent to stamp goods manufactured thereunder with the name of the 
patentee, such right succeeds to the public with expiration of the patent, 
and the exclusive monopoly of such name can not lawfully be vested in 
the present or former owners of the patent as a trade-mark. (Canal 
Company v, Clark, 13 Wallace, 311.) 

Another principle of the old trade-mark law was that the name of a 
person can not be used as a trade-mark or the generic name describing 
an article can not be made a trade-mark; and in the bill gentlemen have 
reported here they have made provision that the name shall not be made 
a trade-mark, carrying out the decisions to which I have alluded in that 
respect, also the old law, so that under the patent laws no such protec- 
tion could be given as the Judiciary Committee seem to indicate. These 
are all false hopes, forced and unnatural. 

I lay down these two propositions: 

First. It is a public necessity that we have throughout the United 
States one universal, uniform, harmonious system of legislation upou 
the subject of trade-marks. 



FORTY-SIXTH CONGRESS. 463 

Second. There is no power granted to Congress in the Constitution 
to enact such a system, nor has Congress the power in any practical 
way to legislate upon the subject. 

A trade-mark is a species of personal property of such intangible 
and invisible character as to require for convenience and control that 
it be evidenced to the rightful possessor by the grant of a certificate 
by Government, and although it belongs as a natural right at common 
law to the individual who originally adopts and uses it, yet that right 
should be merged into the statutory grant when made. In the mixed 
form of our Government it has long since been demonstrated by experi- 
ence that such subject can alone be controlled harmoniously by the 
Congress, and it was the purpose of the fathers of the Government, who 
in convention framed the Constitution, to include in the powers of 
Congress all such subjects. The evils which led to this practice, 
under the old confederation, are familiar to all, and I take up no time 
to enumerate them. These evils were but examples of all that would 
result to the country if this subject of trade -marks is solved in any 
way except by giving the entire control of it to Congress. Confusion, 
conflict in State laws and State decisions and State practice, vexatious 
lawsuits, jealousies, and loss of value to all such property and the 
interests of manufactures and trade would result. 

That this subject was not so specifically granted along with others 
of its analogues in the Constitution is because at that .time it was 
unknown; but few cases had been reported; it was unmentioned in 
law books of the day, and its importance was unf elt. It has grown 
lip since, and to make a grant of that power now is but carrying out 
the spirit of the founders of the Government. The very nature of 
the property is such that we can not cast lots upon it and divide it out 
to the jurisdiction of thirty-eight governments who are unable to form 
treaties with each other, and give the General Government what is 
left under interstate and foreign commerce. The commercial nations 
of the world have by reciprocal treaties expressed their opinion that 
reciprocity, uniformity, and harmony in the protection of trade-marks 
should exist. But there is no way of obtaining reciprocal action 
among individual States but by transferring the whole subject to 
Congress. Grants in the Constitution of power to Congress to legis- 
late upon a subject of common interest is in the nature of a treaty of 
the States, and as all the nations have united in this necessity, so 
should the States in this amendment, to the end of securing a harmo- 
nious system of enactments. The conflicting action and failures on 
the part of nations to recognize the rights of trade-mark owners fairly 
exhibit the natural result of State legislation. 

If protection is to be limited by State lines, trade-marks will become 
of little value. 

It is laid down in all authorities on this subject that such marks in 
their very nature are unlimited by time or territory ; that they have 
individuality — a singleness and unity which renders the subject indi- 
visible. 

The practical effect of an attempted regulation of these commercial 
signatures, under the theory that they come within the clause of the 
Constitution on the subject of commerce, is to give to one portion of our 
citizens superior protection and leave a large portion, perhaps the larg- 
est, out of its pale. It would be very offensive — simply outrageous — 
if such a law should prove to be valid and give to aliens the monopoly of 



464 KEVISION OF STATUTES BELATING TO PATENTS, ETC. 

trade-mark protection, leaving our own countrymen to the cold remedies 
of common law. 

It is far better not to undertake any Quixotic attempts against the 
Constitution, any mere tentative, temporary statute. Our foreign or 
interstate interests may as well wait as the larger portion of trade and 
traffic between citizens of the same State. Up to 1870 all that we had 
was the common law, and we extended in our courts to treaty-protected 
aliens equal protection with our own people. We are, not through our 
fault, thrown back to that status. Aliens only suffer with ourselves the 
temporary inconvenience of the statutory interregnum. They can not 
justly complain or retaliate. This is a Government of delegated con- 
stitutional powers; and they must wait the constitutional process by 
which that instrument can be amended and statutes passed. If we in 
good faith enter upon the path best calculated to secure that protection 
which they demand, it is all they can reasonably ask. 

It is not the part of wisdom to allow the swift pressure of their inter- 
ests to push us to that partial action which the Supreme Court well says 
" it is quite probable * * * if the matter were now before that body 
[Congress] it would be unwilling to do, namely, make a trade-mark law 
which is only partial in its operation, and which would complicate the 
right which parties would hold in some instances under the act of Con- 
gress and in others under State laws." This is the discordant, partial, 
and unsatisfactory law now urged as a substitute for the constitutional 
amendment. The Supreme Court refused to make it by judicial con- 
struction, and we should refuse to make it by doubtful constitutional 
experiment. 

NATURE OP TRADE-MARKS. 

The origin of this species of property, the rights and remedies, sus- 
tain the proposition that it is and should be controlled by a compre- 
hensive national code. First, trade-marks exist as a natural proprie- 
tary right, and received recognition and judicial protection prior to 
any statutory enactments. And they now, in the absence of any 
legislation on »the part of the United States, or of any constitutional 
power to so legislate, still exists as the property of the person who has 
first adopted and used a mark on any certain article to distinguish it. 
Such person has the right of action for damages for the fraudulent 
use of his mark against any one who applies it to any similar article 
of other origin or make. He has this proprietary right for an unlim- 
ited time and bounded by no State or nation. He has also the equi- 
table right to restrain the unlawful use of his mark. 

The right exists. The owners ought to be further protected. The 
common-law remedies have been felt to be inadequate for many reasons. 

First. The issue of whether or not the plaintiff is in the rightful 
possession of the mark by prior adoption and use must in each sep- 
arate case be established. As time wears away this becomes very dif- 
ficult, if not impossible. There is no court in which this issue may 
be once presumptively adjudged for all, and a record of such judgment 
certified and the results remain, once for all, res adjudicata. 

Second. The remedies are not sufficient to restrain the greed of gain 
and the bravery of fraud. The gains are so out of proportion to the 
risk that, in the general stampede of pirates, a trade-mark depreciates 
as fast as fiat money. The public are so deceived they put no faith in 
even "the genuine; and the manufacturer finds that which wholesome 



FORTY-SIXTH CONGRESS. 465 

legislation would render of great value to himself and the purchasing 
public comparatively worthless — not worth the expense of the endless 
petty litigation necessary to preserve it. 

Third. Beyond the little circle of his own domestic life, his State, 
and his friends he is left to the dim sense of natural justice, which 
lends its cold hand to the alien suitor. He is without remedy. 

But I believe as yet no one has seriously announced himself as op- 
posed to additional statutory protection to trade-mark owners. But 
the discussion is between three classes of thinkers. 

First, those who believe the local legislation of the States all that is 
required, and that the subject of trade-marks should, with the ear- 
marks and brands of domestic animals, be governed by domestic stat- 
utes of each State. 

Second, those who believe that it is a subject that can be practically 
divided, and partial control left with the legislatures of States; and 
the other portion, under the head of commerce among the States, Con- 
gress has constitutional power to regulate. 

And third, those who are of the opinion that it is an indivisible sub- 
ject, entirely national in its vast importance, of which the mere com- 
merce between citizens of different States would cover but little if 
any, and that no clause of the Constitution comprehends it; but that it 
has grown up and become recognized as requiring protection, in the 
interests of manufactures and trade, since the adoption of the Consti- 
tution, and that it is of sufficient importance to be made the subject 
of a grant of power to Congress, in order that the whole subject may 
be made the object of one uniform, harmonious, and efficient national 
statute. 

Before entering upon the discussion of these propositions, let u» 
inquire into the nature of the right or property to be protected. A 
trade-mark is the exclusive privilege of using a mark or symbol to 
distinguish articles of manufacture so that purchasers may identify 
them. To perfect a trade-mark as the property of a person requires 
the manufacturing of a certain article of salable property, the selection 
of a certain mark or design to identify such property as genuine, the 
impressing of that mark upon the property. These done, and the use 
is complete. 

This adoption of the mark and impressing it on the goods is the 
complete and perfect use of a trade-mark. The manufacture of the 
goods before or the shipment and sale of the goods after are in no> 
proper" sense comprehended in the subject. (See Brown on Trade- 
Marks, section 52 and section 109.) 

The mark does not exist, except it be as a conception of the mind; 
but in law or fact it does not exist until it is impressed upon goods, 
as your signature only exists when written. In fact, the marking the 
goods of a manufacturer with his commercial signature or stamp of 
genuineness is, if a part of either, a part of the finishing act of the 
manufacture of the article, rather than belonging to the transportation, 
sale, or commerce of such goods. The goods are prepared and marked 
in the manufactory before they are ready for transfer to the sales or 
shipping room. Of course every separate act of the manufacture, 
from the purchase of the raw material to the impress of the signet of 
trade, the seal of ownership, is prompted by and accompanied with an 
intent to sell in any and all the markets it is possible to enter. And 
the goods thu6 completed are intended to be the subjects of intrastate. 



466 EE VISION OF STATUTES RELATING TO PATENTS, ETC. 

interstate, and foreign commerce. The entire thing enjoyed is the 
preference in market for certain goods. In the words of one court: 

It is a right which can be said to exist only and can be tested only by its violation. 
It is the right which any person designating his wares or commodities by a particular 
trade-mark, as it is called, has to prevent others from selling wares which are not his 
marked with that trade-mark in order to mislead the public, and so, incidentally, to 
injure the person who is owner of the trade-mark. 

The property which is to be the subject of constitutional and Con- 
gressional protection is in the combination of the article manufac- 
tured and the distinguishing mark, its consummation as the rightful 
possession of its owner, and its violation consists in stamping the 
mark on the goods. 

As patents and coj)y rights are already subjects of Congressional 
clauses and of exclusive legislation by Congress, a comparison with 
them will give a clear idea of the nature of the property in trade- 
marks. 

Primarily trade-marks differ from patents and copyrights. Their 
origin differs. A mark for use in trade is selected anywhere; the 
word, the idea, the sign, may be as old as Adam. It may be a mule's 
ear, a lion, an elephant, or a star. It originates only by adoption and 
use. Patents spring from original invention; the owner is father to 
the idea. 

Copyrights also belong to the claimant by reason of originality of 
production. It is the creature of his intellect, his thoughts, his genius, 
and therefore his own. 

In this they differ. Patents and copyrights become the owners' 
property in a different way and for different reasons from trade-marks. 
But even in this difference there is a latent analogy. Priority of use, 
the very twin of originality, is the title bond to a trade-mark. One 
is the priority of thought, of invention, of discovery; the other the 
priority of combination. And in that combination there is originality, 
thought, invention, and discovery. Many patents are but the result 
of priority of combination of "plain, simple, old, and well-known" 
things. Many grand and beautiful productions of the most brilliant 
stars in the literary world are but masterly conceptions of the com- 
bined effect of familiar fancies, the precipitate of old thoughts. In 
this sense the adopter and user of a trade-mark is both the author and 
the inventor of the combination of the marked goods. And he has no 
exclusive property in it except in that original application in which it 
is impressed upon the article. 

But I am not differing from the opinion of the Supreme Court. I 
only intend to show you that while this subject of trade-marks was 
not contemplated by our fathers in the writing of the clauses of the 
<Donstitution on the subjects of patents and copyrights (as it was not 
in the clause on the subject of commerce), jet the subject, as it has 
^rown into importance since their day, is analogous to them both, even 
in that in which it differs most, its very origin. But admitting this dif- 
ference between them here in the literal want of a relation to invention 
or discovery, or in the want of originality or the fruit of intellectual 
labor, I venture to assert that this is the only point of difference. 
This absence of invention and originality excludes it from the con- 
templation of the clauses of the Constitution in relation to these sub- 
jects in the opinion of the Supreme Court. Pass from the birth of the 
proprietary right and examine the nature of the property. What do 



FORTY-SIXTH CONGRESS. 467 

you find? The species of property is the same. The character, the 
nature of some rights is best disclosed by their violation, and this is 
true of these three proprietary rights — patents, copyrights, and trade- 
marks. Their violation is an infringement. In all these it is identical. 
American decisions have from the first, and English decisions have at 
last, placed the protection of trade-mai>ks along with patents and 
copyrights upon the ground of property. In deciding upon just the 
nature of this property and its distinctiveness from commerce let me 
call your attention to all property of this kind. I may omit some^ 
but I believe they are included in these patents, copyrights, trade- 
marks, the good-will of trade, and the property in the name of a 
magazine or other serial literary publication. 

In point of property all these stand upon the same ground. How- 
ever that property may be acquired, it is itself the same in all. They 
are identical, too, in the remedies which the law extends to them. The 
nature of the injury in each in case of piracy or infringement is the 
same. That injury is felt in cheapening the price of the goods by an 
inferior competitor and destroying the reputation of goods by the 
discovery of the inferiority, or, if not inferior, by fraudulently secur- 
ing the advantages of the character of another in the market. The 
common-law remedies are the same. The injured party has his action 
for damages for fraud or the infringement, and his equitable right to 
restrain by injunction, and ought to have the better remedies of the 
statutes against counterfeiting and pirating. 

To sum up, then, the discussion of the nature of the property in 
trade-marks, I say a trade-mark is a symbol of genuineness impressed 
upon certain salable goods by the prior appropriator of that mark; 
that he has a species of property in the exclusive application of the 
symbol to the specified articles; that his remedies are damages for 
infringement and injunction, and other more efficient statutory pro- 
tection; that in the species of property, the injury, and the remedies, 
it is identical with patents and copyrights. 

IS THE POWER TO REGULATE TRADE-MARKS CONTAINED IN THE POWER TO REGULATE 

COMMERCE ? 

But the point of serious divergence of opinion, perhaps, is the next, 
that the subject can be practically divided into that regulation of 
trade-marks used in interstate commerce by itself, and that part used 
in State commerce by itself; and that Congress, under the power to 
regulate commerce among the States, already has all that is needed for 
her share, leaving to the States the rest. A great many still hold to 
this opinion. 

I suppose the germ of that opinion, and the suggestion of that posi- 
tion which takes form in the bill (H. R. No. 2573) by Mr. Armfield, 
lies in the remarks of the Supreme Court in the late opinion declaring 
all present laws unconstitutional; and I want first to carefully examine 
that opinion upon that point. Of course we all know the danger of 
seizing upon the running words of a writer of an opinion who means 
no more than to decide the case in point, and dreams not of suggest- 
ing legislation, or any other improper obiter dicta. And we know, 
too, how utterly futile, how useless, and how injurious is the effort to 
cling to straws like a drowning man when a decision has swept away, 
as a flood, all the structure of law by taking from under it the foun- 
dation. No judge would express his opinion upon this subject now^ 



468 KEVISIOK OF STATUTES KELATING TO PATENTS, ETC. 

He would not prejudge a case off the bench which he was so careful 
to leave undecided on the bench. 

You will find on page 5 of the report of the Committee on Manu- 
factures, in the opinion of the court, the following language: 

The question, therefore, whether the trade-mark bears such a relation to commerce 
in general terms as to bring it within Congressional control, when used or applied to 
the classes of commerce which fall within that control, is one which, in the present 
case, we propose to leave undecided. We adopt this course because when this court is 
called on in the course of the administration of the law to consider whether an act 
of Congress or any other department of the Government is within the constitutional 
authority of that department, a due respect for a coordinate branch of the Government 
requires thai we shall decide that it has transcended its powers only ivhen that is so plain 
that we can not avoid the duty. 

In such cases it is manifestly the dictate of wisdom and judicial propriety to decide 
no more than is necessary to the case in hand. That such has been the uniform 
course of this court in regard to statutes passed by Congress will readily appear to 
any one who will consider the vast amount of argument presented to us assailing 
such statutes as unconstitutional, and will count, as he may do on his fingers, the 
instances in which this court has declared an act of Congress void for want of con- 
stitutional power. 

Here I suppose are the paragraphs in which is suggested the hope 
that such constitutional legislation is possible. 

The question was. Does the trade-mark bear such a relation to com- 
merce as to be controlled by Congress as an attribute of it? They 
say, "We propose to leave it undecided." But why? Because "a 
due respect * * * requires that we shall decide." Decide what? 
Decide " that it has transcended its powers." Then that is the dis- 
agreeable duty they propose to leave undone now, and to do "only 
when * * * we can not avoid the duty." It is as much as to say 
Congress has not yet in that way or under that claim or pretense tran- 
scended its powers. It has not been so foolish or so grasping or so 
ill-informed as to even believe it was acting under that clause of the 
Constitution. 

When it is plain that such is the case, when Congress undertakes to 
enact a law which can only be valid in that clause, and upon the claim 
that a trade-mark bears such a relation to commerce in general terms 
as to be a subject of its control, then, and not till then, in a proper 
case we will add one more to the few instances in which the Supreme 
Court have declared its acts void for want of constitutional power. 
Then the court proceeds to show that Congress did not claim such 
power under the commerce clause. It could not regulate commerce 
except "among the States," "with foreign nations," and "with the 
Indians." And as the largest part of commerce is perhaps within the 
State, the power would not be adequate, not sufficient, not comprehen- 
sive enough. It was evident the regulations of trade should and were 
intended to be "applicable to all trade, to commerce at all points." 
"Its broad purpose was to establish a universal system of trade-mark 
registration for the benefit of all who had already used a trade-mark, 
or who wished to adopt one in the future, with regard to the char- 
acter of the trade to which it was to be applied or the locality of the 
owner." 

I should rather believe from this language that the reserved judg- 
ment of the court, so far as formed, though unexpressed, was that so 
far as it affected protection of trade-marks in a State or its use in 
interstate traffic, the act was unconstitutional as a regulation of com- 
merce. I make these remarks upon that decision with much diffidence, 



FOETY-SIXTH CONGEESS. 469 

not -willing to put words in the mouths of the court or twist these 
from their intended meaning. 

Now, let us sum up the argument found in the decision of the 
Supreme Court against the constitutionality of this legislation under 
the commerce clause. They assert that it is not every species of 
property which is the subject of commerce or which is used or even 
essential in commerce which is brought by this clause of the Consti- 
tution within control of Congress. They say a due respect requires 
that they decide that Congress has transcended its powers only when 
they can not avoid it; and for that reason they leave it undecided. 
They show that this power of regulation conferred on Congress is 
limited, while trade-marks require unlimited regulation, and that the 
largest amount of traffic where it affects is beyond the limits of this 
power. They say it is evident Congress did not believe it was acting 
under this clause. They show that the broad purpose of Congressional 
legislation was manifestly to establish a universal system for the benefit 
of all without regard to trade or locality. 

They regard a partial law as so objectionable as not likely to pass 
Congress. They say it would complicate rights and cause a conflict of 
law between State and nation. They close by saying the inquiry 
whether these statutes can be upheld in whole or in part as valid and 
constitutional must be answered in the negative. That it is not upheld 
as a universal system under the patent clause, as a whole — not under 
the commerce clause so far as affects interstate and foreign commerce, 
in part. That is a bold mind that can face these statements of the 
decision and say they meant to suggest that such a law could be valid. 

But I am the more confident in this, because this view is sustained 
by the best reasons; and in my judgment, upon the merits of the case, 
should it ever come before that court, requiring their decision, they 
would decide the subject of trade-marks to bear no such relation to 
commerce as to bring it within Congressional control. 

It is not a subject of commerce; it is not a vehicle or instrument of 
commerce. It does not come within any of the decisions extending 
the meaning of the term commerce in the Constitution. It will not 
do to say, because the goods to which a trade-mark is applied are 
intended to be transported from one State to another, or sold by a cit- 
izen of one State to a citizen of another, that the mark becomes so 
related to commerce as to be the subject of Congressional control. The 
argument proves too much, and would draw within the control of 
Congress all species of property and all the minutiae of its manufacture. 

If you take the subject out of the field of specialties, such as patents 
and copyrights, and place it within that of commerce, then you leave it 
there to be divided into parts and give it an even worse status than if 
left entirely to the States. It becomes then your duty to carve out of 
it what is commerce within a State, what is commerce among the 
States, what is foreign commerce, and what is commerce with the 
Indians. Where will you draw your lines without confusion? How 
will you frame your statutes with precision ? Who is to decide what 
claimant has the priority ? Who is to reconcile conflicting decisions ? 
How are you going to bring about uniformity in the system ? When 
Massachusetts decides with A and South Carolina with B and Texas 
with C and the United States with E, and each within the limits of that 
part of the control of the subject committed by you to that particular 
government exercises his right of ownership to the same mark, who is 
to bring order out of that confusion 1 



470 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

You draw around your legislation the lines of constitutional limits 
by repeating the words ' ' used in commerce with foreign nations, or 
among the several States, or with the Indian tribes," as Richelieu 
threw around his protege with the gesture of his hand the muniments 
of Rome. Then, christened thus in constitutional phrase, you do the 
identical things which the Supreme Court have decided you can not 
do. Are the forms of the Constitution put on and off so lightly and 
so easily ? Does the Constitution change like the colors of a chame- 
leon? On a green branch is it green; on a black, black? 

This, to my mind, is the simplest folly. 

Suppose you say, "Used in commerce among the several States, or 
with foreign nations, or with the Indian tribes." Trade-marks used 
in commerce among the several States! How used? What do you 
mean by "used in commerce among States?" Trade-marks are just 
marks. In the simplest meaning of that word, can you use a mark ia 
commerce? You may mark something that is going to be shipped; or 
you may ship something that is going to be marked; or you may mark 
something, and it may some time be shipped. Again, are j^ou going 
to give the proprietary right of a citizen of a particular State to a 
trade-mark used within his own State by your act to another to be 
"used in commerce among the States or with foreign nations? " How 
are 3^ou to tell, in the exercise of your divided jurisdiction, how much 
conflict you create with the local rights of others? While I enjoy in 
Iowa the protection of my trade-mark in the local markets of my State, 
are you to permit others shipping in from other States or nations to 
pour in upon me, under the ssgis of your protection and exclusive 
grant, goods impressed with my trade-mark ? Then what do you mean, 
and where do you draw the line ? 

Mr. Speaker, do we not see that the subject is indivisible, insepara- 
ble; that, as Congress wisely attempted to do, had it had the power, 
what we want to get the power to do and do is to establish a universal 
system of trade-mark registration for the benefit of all, without regard 
to the character of the trade to which it is to be applied or the local- 
ity of the owner; to have a uniform system, one place of granting 
certificates, one place of record, one statute of protection, one penalty 
of violations ? 

We have seen it is like patents and copyrights in nearly every 
respect. Ought it not, like them, to be made the specific subject of 
Congressional control? Even were it possible to force the terms of 
the Constitution to meet the case, it would be vastly more harmful 
than to make a specific grant of the power, as the resolution provides. 
There is danger in extending the powers of Congress by inference and 
construction of its present clauses beyond their natural and original 
meaning. And it is much the safer and better plan to enlarge these 
powers by additional and express grants as in the progress of time 
they become necessar}^ 

See the case of Gibbons v. Ogden (9 Wheaton R., 198). 

In Veazie -y. Moor (14 Howard, 568), Justice Daniels says: 

Taking the term commerce in its broadest acceptation, supposing it to embrace not 
merely traffic, but the means and vehicles by which it is prosecuted, can it properly 
be made to include objects and purposes such as those contemplated by the law under 
review? (A law granting the exclusive right to navigate the upper waters of a river 
lying wholly within the limits of the State granting it, impassably separated from 
tidal waters and not forming a part of any continuous track of commerce between 
States.) Commerce with foreign nations must signify commerce which in some sense 



FORTY-SIXTH CONGRESS. 471 

is necessarily connected with those nations, transactions which either immediately 
or at some stage of their progress must be extra-territorial. The phrase can never 
be applied to transactions wholly internal between citizens of the same community 
or to a policy and laws whose ends and purposes and operations are restricted to the 
territory and soil and jurisdiction of such community. Nor can it be properly con- 
cluded that because the products of domestic enterprise in agriculture or manufac- 
tures, or in the arts, may ultimately become the subjects of foreign commerce, that 
the control of the means or the encouragements by which enterprise is fostered and 
protected is legitimately within the import of the phrase foreign commerce or fairly 
implied in any investiture of the power to regulate such commerce. A pretension as 
far-reaching as this would extend to contracts between citizen and citizen of tlie same 
State, would control the pursuits of the planter, the grazier, the manufacturer, the 
mechanic, the immense operations of the collieries and mines and furnaces of the 
country; for there is not one of these avocations the results of which may not become 
the subjects of foreign commerce, and be borne either by turnpikes, canals, or rail- 
roads from point to point within the several States toward an ultimate destination, 
like the one above mentioned. 

Such a pretension would effectually prevent or paralyze every effort at internal 
improvement by the several States; for it can not be supposed that the States would 
exhaust their capital and their credit in the construction of turnpikes, canals, and 
railroads, the remuneration derivable from which and all control over which might 
be immediately wrested from them, because such public works would be facilities for 
commerce which, while availing itself of those facilities, was unquestionably internal, 
although intermediately or ultimately it might become foreign. 

The rule here given with respect to the regulation of foreign commerce equally 
excludes from the regulation of commerce between the States and the Indian tribes 
the control of turnpikes, canals, or railroads, or the clearing and deepening of water 
courses exclusively within the States, or the management of the transportation upou 
and by means of such improvements. 

To whip the devil around the stump and avoid the effect of a consti- 
tutional inhibition by the jugglery of a few empty words, were it 
possible, would be full of danger. 

Why quibble around the Constitution and make a lame, indefinite, 
useless law, instead of manfully shouldering the whole question, get 
the necessary power in the good old way, and then legislate intelli- 
gently and safely? All that could be secured by any other course 
would be additional doubt, litigation, conflict, until the law would 
become a dead letter. 

Now, in reference to the amendment here, I ask leave to substitute 
for the amendment in its language the following, which 1 will ask the 
Clerk to read: 

The Clerk read as follows: 

Section I. Congress shall have power to provide for the registration and protec- 
tion of trade-marks. 

Mr. McCoiD. That brings the constitutional amendment simply 
down to what we want, and there can be no objection, as I understand 
the gentleman from Georgia to say there might be, to the wording of 
the amendment, and I ask this to be made the section instead of the 
one in the resolution, so that there may be no objection to the wordmg 
of the resolution. 

Now, Mr. Speaker, in reference to the amendment. Gentlemen here 
have expressed themselves — and I believe it is the general feeling upon 
the subject — that they are opposed and unwilling to amend the Consti- 
tution except upon a great necessity. 1 agree fully with the expressions 
of the gentleman from Georgia as to that venerable and venerated 
instrument, and I am in full accord with him on that subject that it is 
dear to us by the associations of history in connection with the times 
in which it was made, and that it is wise in its provisions. 
S. Doc. 20 31* 



472 REVISION OF STATUTES EELATING TO PATENTS, ETC. 

But, Mr. Speaker, it is only the articles of incorporation of this 
Government, and the doctrine that it is unchangeable can not be main- 
tained for a moment. The American people are not a stolid, unpro- 
gressive people, that require no changes in their organic law. We are 
not Asiatics, and I can see no argument in the assertion that the Con- 
stitution was designed by its founders not to be changed to fit the con- 
ditions of a growing, prosperous nation. The lion's skin may become 
too short. We are stretching our limbs; we are expanding our lungs; 
we are extending our territory, increasing the number of our States, 
extending new lines of railway, stretching telegraph wires across 
plains and mountains; we are swarming above and talking beneath the 
seas; we are overcoming new difficulties and contriving new forces and 
instruments of enterprise, and the giant form which is thus growing 
to manhood can not lie within the narrow confines of the cradle of its 
infancy. And those honored men whose names we revere and whose 
work has come down to us with the sanctity that attaches to it intended 
that there should be changes in the organic law and provided that 
changes should be made. In reference to this necessity, I beg leave to 
read one or two extracts from the Civil Policy of America, by Draper. 

He writes: 

The first and most important condition for the prosperity of a great nation is 
stability in its institutions. But stability must be carefully distinguished from immo- 
bility. We must bear in mind that the affairs of men are ever changing; successive 
generations live under essentially different conditions; public necessities are there- 
fore continually varying, and disorder arises as soon as institutions prescribe one 
course and necessity demands another. To insure stability the political system must 
therefore admit of change — that change being in accordance with a law of variation 
which depends on a fixed principle. Unchangeability should belong to the law, not 
to the institutions issuing from it. In that manner alone can order and progress 
coexist, and the demand made by modern statesmanship with so much solicitude 
be satisfied. It truly affirms that there can be no real order without progress, and 
no real progress without order. 

institutions well adapted for five millions of people will certainly be very unsuit- 
able for fifty. Institutions intended for a narrow coast line will certainly be inade- 
quate if applied to one of the quarters of the globe. Edifices, though they may be 
built of iron, will fall to pieces if the architect has not made provision for expansion 
at one point and contraction at another. Where motion must in the necessities of 
the case occur, it is essential for safety that there should be a harmony among the 
moving parts. Inequality of progressive movement implies strain, strain implies 
fracture. It is therefore the province of statesmanship to determine how change 
shall be provided for in political institutions, and what is the true nature of the law 
by which they shall be modified. Above all, it is its province to discover the immu- 
table principles on which that law must rest. It is better for communities to advance 
through legal forms than by revolutionary impulses, or by attempting to secure 
stability through incessantly failing experiments. The only safe guide for them to 
follow is furnished by a careful investigation of the circumstances under which their 
life has been and is to be spent. 

Now, I have only to say further that changes in our Constitution 
should be made only for imperative reasons. It is only a question of 
necessity, so as to place ourselves as a nation and our people upon an 
equal footing with those of the commercial nations of the world. 
There is no power in the States to make treaties with each other. 
That power has been left to the General Government for them. This 
amendment provides no different rule with reference to this than is 
applicable to our treaties with England, France, Belgium, and the 
other nations of the world, stipulating that uniform laws shall govern 
all alike upon the subject of trade-marks. We have not hesitated to 
seek that uniformity of mutual protection by treaties with other gov- 
ernments, and why should we decline to unite our thirty-eight States 



FOETY-SIXTH CONGEESS. 473 

In the same uniformity through constitutional amendment and national 
legislation. We have not feared to change international law, why 
should we refuse to amend the interstate organic law. The Constitu- 
tion, Mr. Speaker, is not a mummy of unchangeableness laid away in 
the pyramid of our reverence for our fathers, but the plastic charter 
for a living, growing, ever-changing people. Here is a great interest 
affecting vitally our trade and commerce, and we desire tO legislate 
upon it. We thought we had the constitutional power. We enacted 
what we intended to be, in the language of the Supreme Court, a uni- 
form system of trade-mark legislation. It worked well and satisfac- 
torily to the whole people. 

That legislation was declared void for want of constitutional power. 
It is admitted by the opponents of this amendment that it would be a 
great convenience to the people. The plain, direct, practical way out 
of the difficulty is first to secure the power, all that we supposed we 
had by the constitutional amendment, and then legislate as we did 
before. 

The gentleman from Georgia seems to think the subject a trivial 
one, and not of sufficient importance to justify this action; and in his 
attempt to belittle it he talks of the protection of " Winslow's Sooth- 
ing Syrup" and such things as that. I wish to remind the gentleman, 
in order to relieve his mind from that attempt to belittle the subject, 
that he justifies and eulogizes our fathers for placing the copyright 
clause in our Constitution; but he might, with a like spirit of unfair- 
ness, as well have ridiculed them by referring to these copyrighted 
works I have before me [holding them up] — the "Dashington Broth- 
ers' Negro Song-Book," the '' Pi tcher-of -Beer Songster," the ''Sulli- 
van and Harrington Sweet Jerusha Jane Songster," ""Little Grant's 
Tired of Single Life Songster," ''Mother Goose," "Weston Brothers' 
Laughing Chorus," and "Jenny Jones's Songster." 

A Member. Do not forget "Jack, the Giant-Killer." 

Mr. McCoid. I will include "Jack, the Giant-Killer," as the gen- 
tleman suggests, and I might mention many others. The gentleman 
from Georgia attempts to belittle the subject; and yet he stands in the 
presence of the fact that the great sovereignties of Germany and 
America, the great sovereignties of France and America, the great 
sovereignties of Russia and America, the great sovereignties of Bel- 
gium and America, and all the powers with whom we have treaties have 
met in solemn convention, and the high contracting powers have con- 
sidered this subject and made it an important clause in treaties between 
great nations. Yet the gentleman could not point to anything of the 
kind with reference to the copyright laws or the patent laws. It is a 
subject of far more importance to-day to the prosperity of the Amer- 
ican people, their trade or their commerce, than I fear the gentleman 
from Georgia has any idea of. 

If that trade-mark law had existed under the penal section in the acts 
of Congress protecting trade-marks, we would soon have had thousands 
and thousands more of them. The trade-marks registered in the Pat- 
ent Office to-day do not represent one-tenth of the trade-marks in this 
country. You will find them in every grocery, in every store, in every 
manufactory, that are not recorded at all, because the people had not 
arrived at a knowledge of the efficiency of the protection of the national 
laws until 1876, when the penal clause was put in. Men will not pro- 
tect themselves under the common law by suing for damages, for the 



474 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

result is too small for the expense. But the penal laws to punish the 
pirating and counterfeiting of trade-marks would lead every man wha 
had a trade-mark to pay the fees of the Patent Office and receive his 
registration. 

STATE RIGHTS AND STATE LEGISLATION. 

I must refer briefly to another question which the gentleman from 
Georgia discussed, as to whether States may properly protect these 
rights. We have, the gentleman says, in a great many of the States 
laws on this subject ; that the common law and State legislation afford 
all the protection American owners of trade-marks need. The gentle- 
man from Georgia says : 

It is^ claimed that the States can not adequately protect trade-marks. Why not? 
Their judges are as honest and as learned in the law as those upon the United States 
benches. The jurors, if different in the two courts, are not better in those of the 
Federal courts; in some parts of the country they are much below the State standard 
of intelligence and virtue. States officers are more numerous and equally faithful, 
their courts more numerous and more accessible; justice can be had cheaper and 
quicker in the State courts. 

Again he says: 

This Government has naught to do with the protection of purchasers of manufac- 
tured goods. It ought not to have; that work properly belongs to the several States. 

And then he closes his remarks with a brilliant rhetorical peroration 
on the subject of State rights and State sovereignty, in which he says^ 
''The United States is strong enough; let us magnify the States." 

It is really pitiable to see how every subject of legislative action, 
great or small, is poisoned, discolored, and put beyond the pale of just 
consideration in the minds of some men by the ghost of State rights. 
They seem to walk in a graveyard of the past, and every stone is a 
specter to harrow up their souls on this subject. They can not talk a 
half an hour upon any subject — the sword of Washington, the staff of 
Franklin, the dumb desk of Jefferson, or even the simple subject of 
trade-marks — without entering into learned disquisitions on the subject 
of State sovereignty. Excavators of the earth, they say, sometimes 
find stones from which when opened a toad leaps out. So it is with 
these gentlemen. They bring into this House some carefully prepared 
argument on the most innocent subject, and as you settle yourself in 
your seat to do justice in attention to their prepared eloquence you 
find yourself suddenly surprised and mortified to see leap forth as they 
open it the toad of State rights. 

There is no State rights in this subject; none whatever. You are 
not asked to relinquish one power the States now have or to dimdnish 
in the least your State's right to control her domestic affairs. The 
common law will 3^et remain, the statutes of the States will yet remain, 
and their efficiency for domestic protection will be just as great. Why, 
the gentleman gives the States where statutes upon this subject exist, 
and saj^s: 

It appears (by absence of reported cases) that no one has ever sought to protect 
himself at law as to trade-marks in either of the States just named except Georgia. 

And in Georgia there is no State legislation proper, for it but reen- 
acts the common-law remedies. The United States passed a uniform 
system of legislation upon this subject in 1870, and added still more 
efficient amendments in 1876. Whoever heard of any complaint from 



FORTY-SIXTH CONGRESS. 475 

States? Was the glory of Georgia dimmed or her sovereignty hum- 
bled? Did it not give the most perfect and universal satisfaction 
except to pirates and infringers? Pshaw, now be reasonable! You 
5ay State legislation is enough for American owners of trade-marks. 
Well, then, why not good enough, ample enough, equally for aliens? 
Your logic cuts your own throat. Why are you here urging a bill to 
enact a code of trade-mark laws for foreigners — ay, the very laws 
which Congress did pass for all, and which it is desired to pass again 
for all as soon as this constitutional amendment is ratified, and which 
were declared void for want of constitutional power to pass them? 
Why do you urge these laws under another clause of the Constitution 
for foreigners only, and yet in the same breath say "there is no neces- 
sity for such legislation" for our own citizens? Will not State laws 
protect foreign citizens also ? Are not your judges just as honest, your 
State jurors just as good. State officers just as numerous and faithful, 
State courts just as accessible, and justice there as much quicker and 
<jheaper for citizens of other countries as of other States ? By advo- 
cating this bill, this anomaly of legislation, you advocate this amend- 
ment, by which alone the same additional protection may be given to 
our people. Your arguments for it are magnified for our people with 
all the power of the audiphone. 

Those laws are conflicting. Take, for instance, California. Cali- 
fornia gives a trade -mark to the man who first registers it with the 
secretary of state. In Oregon I think the right of a trade-mark is 
given to a man who first applies and registers his trade-mark with the 
secretary of state. In Missouri the trade-mark is obtained by a 
description acknowledged and recorded in the recorder's office of the 
county. Now, imagine those three laws in operation in the United 
States and one man claiming under the registry of California, another 
under that of Oregon, another under the law of Missouri, in virtue of 
a trade-mark recorded in some remote county. There would be no 
end to the litigation under such a conflict of laws. 

The gentleman from Georgia states in his speech that in all these 
States, excf'pt in one case in Georgia, there has not been an action. 
Now, how do you account for the fact that in connection with a subject 
of so much importance as to be made the subject of all the treaties of 
the world there is not a single case reported in State courts except this 
case in Georgia? Why, it is because the laws are so futile and weak 
and unworthy that the people do not apply to them for a remedy. It 
would cost a man more to hire his attorney than all he would get in 
the form of petty damages for the infringement of his trade-mark. 
The gentleman is mistaken as to many of the States he has cited as 
having trade-mark laws. In many cases they are only penal clauses as 
to general brands — merely domestic arrangements, nothing else. But 
we find State legislation is utterly insufficient, and it will result in 
conflict. The Supreme Court say in their opinion the Legislature 
would possibly not pass a law protecting foreign trade-marks and 
leaving the rest to State legislation, which would result in conflict of 
legislation. 

But gentlemen who argue for this bill for foreigners under treaties 
must find themselves admitting that State legislation is not sufficient, 
else why do aliens want more? There must be something urgent, 
important, necessary, which under treaties foreign citizens demand 



476 REVISION OF STATUTES RELATING- TO PATENTS, ETC. 



and which common law and State legislation will not give. Your con 
stitutional provision upon which you found your power says it must 
be ''necessary and proper" legislation to execute a treaty. 

Well, then, does not the same great occasion exist for our citizens 
of the United States to urge such legislation for themselves ? I say 
State legislation is not sufficient. The Committee on Manufactures, 
to which the subject properly belongs, says the amendment and legis- 
lation under it is necessary. But the gentleman asks why ? Because 
State laws are limited to State lines. Because some States will be 
more interested in protecting trade-marks than others, and those who 
feel no interest will not go to the expense of providing and enforcing 
adequate laws; just as under the old confederation, where the expenses 
of wars were to be contributed by the States, those States at a dis- 
tance from the seat of war and secure from its dangers refused to 
contribute to its expense. Because conflicts will arise in legislation 
as well as in ownership of marks in different States. Because there 
will be no common court or office to determine the rights of claimants, 
keep a record of marks, and grant certificates. Certificates of trade- 
mark ownership are assignable like patents, and under a system of 
State certificates there would be no security against duplicates from^ 
different States. 

State legislation has never been of sufficient advantage to be sought. 
Because commercial relations with other countries and among the 
States have become so intimate and great that the world looks to the 
General Government for a recognition of a subject so importantly 
connected with it. Because the subject is not local or domestic in its 
character, but is similar in every respect except its origin to patents 
and copyrights. There are no trade-mark laws except in the States 
of California, Connecticut, Kansas, Maine, Massachusetts, Michigan, 
Missouri, Nebraska, Nevada, New Jersey, New York, Ohio, and Ore- 
gon. Illinois has laws forbidding refilling vessels containing certain 
liquors. Iowa has a penal section for counterfeiting marks, stamps, 
or brands. Kentucky punishes the use of a false brand. Georgia 
gives courts of equity common-law powers by statute. Pennsylvania 
has some penal statutes. Indiana has a penal section against refilling 
bottles of certain liquors in certain cases. That is all. Substantially, 
there is no State legislation comprehending the subject of trade-marks. 

Now, the gentleman from Georgia thinks there is no conflict, and 
State legislation could not result in conflict and confusion. The worst 
conflict to be feared is in the claim of ownership to a trade-mark. 
In the few and meager laws now existing in States let us see if there 
is any such conflict. Take California. Any mechanic, manufacturer, 
druggist, merchant, or tradesman in that State may secure the exclu^ 
sive use of the mark usually fixed by him on his goods by filing with 
the secretary of state a copy or description of the same and claim of 
ownership, with his affidavit that he is the exclusive owner, or agent 
of the owner, and paying a fee of $3. 

In Missouri the mechanic, manufacturer, or other person executes 
a description of his trade-mark, acknowledges it, and records it in the 
county in the office of the recorder of deeds, which is notice to the 
world. 

In Nevada anyone registering his trade-mark or name with the 
secretary of state is protected in that mark. 



I 



FORTY-SIXTH CONGRESS. 477 

In Oregon the trade-mark is registered in the office of the secretary 
of state by the person who first presents the same for record, and 
gives that person the exclusive right to it. Different States protect 
trade-marks on different preferred things. One State mineral water, 
one beer, one flour, one watches, one wines, etc. It seems to me that 
here is chaos of confusion and conflict of laws sufficient even for the 
gentleman from Georgia. And now the addition of this partial leg- 
islation under this bill will but come in to render in its workings 
''confusion worse confounded" until, as even its advocates say, we 
will be driven finally to adopt the proposed amendment. 

But wh}^ wander in this wilderness of unsatisfactory laws until 
taught by sad experience our duty? Let us go right over to the 
inevitable now. I know the pressure from foreign influences, from 
the State Department, and from attornej^s representing the wealth 
involved in foreign trade-marks, which is brought to bear upon Con- 
gress to pass some measure of this character as a present necessity, 
leaving its constitutionality to the courts and its evils to be developed; 
and I feel that the bill will pass. But if it does I hope it may not be 
made an instrument of defeating the submission of the proposed 
amendment. It proposes no change in the Constitution as made by 
its framers, only an addition to it, and one in the nature of carrying 
out the will of its original framers. It is but doing what they did 
for like subjects. They gave to Congress power to legislate on cer- 
tain subjects then known to them to be of public concern. Since 
their day one more of the same species has been added in the growth of 
the world's intercourse. W e execute th eir unfinish ed will by adding it. 

Let the matter be submitted to the States, and let the people vote 
upon it. That, at least, is their right. And it would be a pleasant and 
satisfactory evidence of common sentiments of attachment to the Union 
to see thirty or more of the States unite speedily in making a grant of 
power to the General Government to regulate a subject of such wide 
interest and concern. I hope sincerely to see such a proof of patriot- 
ism and fraternal unity. 

-» * * * * * * 

Mr. Robinson. I do not intend to occupy the attention of the 
House very long at this stage of the discussion of this biU and at this 
hour of the afternoon. I deem it of the utmost importance now that 
we have a vote on this bill to-day, because it should be disposed of 
during this afternoon, in order that it may not obstruct business 
to-morrow. I say, then, to the House that if the}^ will bear with us a 
very few minutes longer we can have a final vote and end this ques- 
tion to-day. 

The subject-matter embraced in the Armfield bill and in the consti- 
tutionpJ amendment which my friend from Iowa [Mr. McCoid] has 
discussed to-day were referred together to the Committee on the 
Judiciary. As my friend from Georgia [Mr. Hammond] has said, 
quite at length, that committee gave full, earnest, and patient consid- 
eration to this matter. We heard all gentlemen who signified any 
desire to communicate any facts or make any suggestions to the com- 
mittee. We were in communication with gentlemen in the large 
cities representing the various trade-mark associations, and their 
attornej'^s have visited us ver}^ frequently. Not only did we hear the 
attorneys and trade-mark people, but we also gave all the opportunity 
that was desired to the o^entleman from Icwa himself. 



478 EE VISION OF STATUTES RELATING TO PATENTS, ETC. 

As the result of our conferences and examination of this matter, 
the Committee on the Judiciary came unanimously to the conclusion 
that we should recommend the bill which is now under consideration 
b}^ the House. The committee, besides relying upon their own judg- 
ment, were confirmed in that judgment by ^he concurrence of the 
several gentlemen representing the different lacerests involved. And 
unless the Committee on the Judiciar}^ are very much mistaken, they 
had also the consent of the gentleman from Iowa that other attempts 
should be abandoned and this bill should be placed on its passage. 
However, that does not debar any gentleman at this time from oppos- 
ing the proposed legislation. 

Mr. McCoiD, Do I understand the gentleman to say that I consent 
to this bill? 

Mr. Robinson. Not at all to-day. 

Mr. McCoiD. But at any time? 

Mr. Robinson. I said that the committee understood (they may have 
been misinformed) at the time this bill was reported to the House that 
the gentleman from Iowa had waived his preference for a constitu- 
tional amendment, and had consented to this bill after consultation 
with the attorne3^s representing the various trade-mark associations. 

Mr. McCoiD. That was an entire mistake. 

Mr. Robinson. If the committee were in error I am ready to be 
corrected. 

Mr. Hammond, of Georgia. Will the gentleman allow me to make a 
statement? 

Mr. Robinson. Certainly. 

Mr. Hammond, of Georgia. The gentleman from Massachusetts [Mr. 
Robinson] is somewhat in error in what he quotes from me. I stated 
that the attorneys for the New York petitioners and the gentleman from 
Iowa [Mr. McCoid] had met me and agreed that the constitutional 
amendment and the bill should travel pari passu. And I reported to 
the committee that he had abandoned his opposition to the bill. I 
may have misunderstood him. The conversation occurred between 
him, Mr. Cox, and mvself at that door [pointing to one of the doors 
in the Hall]. 

Mr. McCoiD. I may have said that if the constitutional amendment 
was passed I would have no objection to this bill. 

Mr. Hammond, of Georgia. Did you not agree with Mr. Cox that 
you would no longer fight the bill ? 

Mr. McCoid. No, sir; I never would have voted for the bill under 
any circumstances. 
' Mr. Hammond, of Georgia. Then I misunderstood you. 

Mr. RoBiNSOi^. Passing that over, because it is not very material, 
we do not find that there is any general demand for the proposed con- 
stitutional amendment. We have discovered that in this way: After 
our hearings, which were protracted and numerous, we held the matter 
a long time under advisement before we would report the bill to the 
House. The gentlemen representing the different trade-mark assso- 
ciations were notified by the subcommittee that they should correspond 
with their clients, the different manufacturers throughout the country, 
and inform us if the}'' demanded anything farther than the bill we had 
agreed upon. Up to the present time the committee have received no 
information that this bill fails to give them entire satisfaction, with a 
single exception coming from the city of Lowell, in the State of Massa- 
chusetts. 



FORTY-SIXTH CONGRESS. 479 

With that exception alone before us, the committee did not deem it 
expedient to ask the Congress of the United States to enter upon the 
process of amending the Constitution in order to meet this one peti- 
tion. They say that if after the passage of this bill, and after it shall 
have gone into operation as a law, there shall seem to be a need for 
further legislation, something broader, something that shall reach 
interstate commerce and transactions between citizens of different 
States, that want will make itself known at the national capital, and 
then we can proceed to amend the Constitution, if it shall be deemed 
expedient. At present there is no demand for it; and that perhaps is 
a sufficient answer to all the arguments of the gentleman from Iowa. 

Upon the subject of the number of trade-marks there may perhaps 
be some confusion or misconception. The gentleman says that less 
than eight thousand trade-marks have been registered; and such is 
the fact; but we do not say, and it is not the fact, that the number 
€ight thousand covers all the trade-marks used throughout the coun- 
try. It is, however, a test of the importance of legislation upon this 
subject. Assume, if you please, that there are five hundred thousand 
trade -marks used in the United States. Perhaps I have not over- 
estimated the number. We find them, for instance, on the different 
cigar boxes. There are all sorts of brands. Everybody puts on a 
box of cigars, if he wishes, his peculiar trade-mark. It is popular for 
the time; when its popularity wanes it is removed and something 
else substituted. It is never registered; it never becomes one of the 
eight thousand. Wh}^? Because its value is not sufficiently great to 
persuade the party that he wants registration. It needs no protection 
hy law; it takes care of itself. Hence I submit your committee are jus- 
tified, and the House will be justified, in believing that if only seven 
or eight thousand of the great number of trade-marks have been regis- 
tered there is not a universal demand for general trade-mark legisla- 
tion; it does not yet appear that that demand is prominent before the 
business community. 

This matter has been in print before the House and within the inspec- 
tion of the different Departments for weeks; and I desire to call the 
attention of the House to a communication which I think will carr}^ 
weight in the minds of members. I allude to a communication from 
the honorable Secretar}^ of State indorsing and recommending this 
bill. The Secretary of State may be supposed to know hj actual 
experience what legislation may be needed under foreign treaties in 
order to carry them into effect ; and certainl}^ he is a gentleman whose 
judgment upon matters of legislation and the efficiency of statutes no 
one will question. This letter was addressed to the honorable gentle- 
man from Georgia [IVTr. Hammond] on the subcommittee, who had not 
time to read it to the House. I therefore send it to the Clerk to be 
read. 

The Clerk read as follows: 

Depaetmext of State, 

Washington, April S2, 1880. 

Sir: I desire to ask your especial attention to the bill (H. R. No. 5088) recently 
reported by you in behalf of the Judiciary Committee (Report No. 561) and to request 
your best efforts to secure its speedy passage. 

From the point of view of the obligations of this Government to the various foreign 
governments with which trade-mark conventions have been concluded prompt action 
pro\'iding for the registration of trade-marks is of the greatest importance. The sub- 
ject is continually being brought to the attention of this Department by the repre- 
sentatives of foreign governments at this capital, who are naturally solicitous for the 



480 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

interests of their countrymen and for the observance of the treaty stipulations. The 
interests of our own people in foreign countries would also suffer even more seriously 
by the removal of the protection which the reciprocal provisions of the various trade- 
mark conventions now furnish them. 

I therefore earnestly request your committee to take such action for the speedy 
passage of the bill as may appear to you most appropriate, and thereby free our own 
citizens abroad and the citizens of foreign countries here from the unf ortmiate state of 
uncertainty in which they are now placed, as well as provide for the proper fulfill- 
ment of the international obligations of the Government. 
I am, sir, your obedient servant, 

Wm. M. Evaets. 
Hon. N. J. Hammond, 

Chairman of tlie Subcommittee of the Judiciary Committee, 

House of Bepresentatives. 

Mr. Robinson. Thus it will be seen that this bill has the indorse- 
ment of the State Department, which I submit is a strong recommen- 
dation. 

One word in passing in regard to the allusion made to the patent 
laws. The committee do not say that section 4900, a part of the pat- 
ent laws, makes provisions for trade-marks. But they do say that 
under that section the patentee who puts the word ''patented," with 
the day of the month and year, upon his inventions, with any other sign 
or device which he may adopt, is protected to some extent under that 
section. 

* "JS- . * * * * * 

The committee, I believe, are unanimous in reporting this bill, with the 
single exception of my honorable friend from Georgia [Mr. Ham- 
mond]. As he has stated his objections to the House, I must address 
a few words to him in the hearing of the House upon his criticisms on 
the penal sections of the bill. The committee, with the single excep- 
tion of the gentleman from Georgia, agree that the bill is right. He 
saj^s he would not have the penal sections of the bill, because we are 
to give foreigners the benefits of those provisions where we do not 
give them to our own citizens. I ask his attention to the language of 
the first section, which provides that ''owners of trade-marks, used in 
commerce with foreign nations or with the Indian tribes, provided 
such owners shall be domiciled in the United States or located in any 
foreign country " that is in treaty with us, may obtain registration, 
etc. Who are the two classes of persons to be benefited by this penal 
legislation? First, owners of trade -marks resident in the United 
States; secondly, owners resident in other countries bound to the 
United States by treaty. That is all I care to say upon that point. I 
think the gentleman will see at once that our citizens are in this 
respect placed upon an equality with citizens of foreign countries. 

In the next place, my friend says that the punishment is too severe. 
Let me follow his reasoning. He instances the case of seduction on 
the high seas, the punishment for which is provided in section 5349 
of the Revised Statutes. He says that the criminal, upon conviction 
for this offense, is punished by a fine of $1,000 or \>j twelve months^ 
imprisonment. But what says my friend from Georgia in the next 
sentence? Death, he says, would be too good for the scoundrel. "If 
we had him in Georgia," he says, "we would put him in the peniten- 
tiary for twenty years." What is the logic of that? That in section 
5349 the penalty is not severe enough. The trouble is not that our 
proposed legislation in this bill is too severe. If the penalt}^ in sec- 
tion 5349 is not severe enough for thp case of seduction, I will join 



FOETY -SIXTH CONGRESS. 481 

him in making it severer. I think he will see the logic of his own 
remarks. 

In the next place his criticism is, while imitations under the pat- 
ent laws are punishable onh^ by a penalty of ^100 (and that is the fact)^ 
3^et we provide a severer penalt}^ and more stringent measures here- 
after to reach imitations. So we do. 

But let us compare the two. Under the trade-mark law 3^011 have 
the civil right against the party who pirates or adopts your trade-mark. 
But there you are limited, except under the penal sections. Then jon 
follow the"^ person who counterfeits or who fraudulently uses jouv 
trade-mark. But go to the patent laws. You not only have the right 
to prosecute the man who infringes b}^ manufacture, by imitation, but 
3^ou can follow every individual user the countr}^ over. And you and 
I, Mr. Speaker, are liable to the suit of an}^ patentee on the smallest 
article we may carry in the pocket, if we have it contrary to the rights^ 
of the patentee. 

Therefore it is not necessary that the patentee should be protected 
by such stringent legislation in addition to what is now provided, and 
there is therefore abundant reason why the trade-mark provision should 
be supplemented by some penal statute. 

And it is true that the provisions which are ingrafted in this bill as- 
the penal sections bear a strong resemblance to the provisions punish- 
ing the countefeiting of money. And they should, from the very 
nature of things. The attempt of a part}^ who seeks to pirate m}^ 
trade-mark is in the direction of an imitation by counterfeiting. You 
punish somebod}^ for counterfeiting the current money of the United 
States. Right. You also would punish a man under this provision 
who would counterfeit my propert}^ in the trade-mark. He ought to 
be punished. It is a form of theft. It is insidious, ft is secret, it 
reaches out into the trade, and not only wrongs me, but is an imposi- 
tion on other men who purchase the article relying on my commercial 
signature, otherwise called my trade-mark. Therefore there ought to 
be some stringent legislation. 

My friend's objection, after all, is not sound when he says there 
should be no penal legislation attached to this bill ; and he intimated 
he would move to strike it out. I beg his attention to this, that every 
State except three that has given us trade-mark laws has attached to 
those laws the penalty of imprisonment for their infraction ; every 
one. Why, in Nebraska it is not exceeding twenty years, if I am 
right about it, and the other States range down. I believe in Kentucky 
and Indiana there is a money fine onl}^ But if it is right to protect 
the trade-mark at all, then we should give the owners of trade-marks 
that protection which will be efficient. Every State which has legis- 
lated on it has found it necessary to have penal legislation for the 
enforcement of the law. Therefore, by abundance of reasoning and 
by experience, we should, if we have here a trade-mark law, make it 
efficient by the same class of penalty. 

But my friend says, "You are multipljdng offenses before the 
United States courts," and he regrets that prosecutions are multiplied. 
No man regrets more than I that the courts are troubled anywhere ia 
this land, State or national, for the prosecution of anybody for viola- 
tion of the law. But in the gentleman's State, as well as in my own, 
there will be found, I presume, for many years to come men who are 
not sufficiently mindful of the rights of their neighbors, men who will 



482 REVISION OF STATUTES EELATING TO PATENTS, ETC, 

take what does not belong to them; and it has always been the policy 
of the law to restrain them by the strong arm, if necessary. There- 
fore, if it is sound we should have this legislation, it is also onl}^ logical 
we should go forward and maintain it b}^ sufficient provisions. 

I submit to m}^ friend, when he saj^s the States have done right in 
their legislation, that the State legislation seems to be efficient and 
sufficient the countrj^ over. Mainly it is because that penal legisla- 
tion has been sustained; and when he and I, therefore, find it neces- 
sary to supplement the State legislation b}^ national acts we shall also 
^o forward of course to make our Congressional legislation efficient as 
well. 

I will not, of course, go into the punishment of these persons and 
where they are sent, or the presence of United States courts, or the 
f requeue}^ of the visits of the marshals. 1 want to say that I believe 
that when the whole people of this country become better acquainted 
with the United States courts and the evidences of their power and 
authority the}^ will have a great deal more respect and reverence for 
them. I hope the time will come when everywhere in this country 
the power of the United States shall be just as highly respected and 
just as ardent]}^ and fondly cherished as the power of any citizen's own 
State. It is the State and the Union together; and I know ni}- friend 
joins with me in that; he has none of that unpleasant distrust for the 
United States courts. Carry them, if you want, to every man's door 
so that he sees their salutary operation every day, and I think he will 
rise in the morning and go to sleep at night proud in the presence of 
the power of the nation. I would not, therefore, strike out these pro- 
visions of the bill, because the}' are necessary' to give life and force 
and strength and success to it, and 1 would not strike them out again 
for any narrow reason that we may sometimes, if we should oflend 
against this law, be called upon by the national power to respond for 
that disobedience. 

I have nothing further to say in advocacy of the bill. With the 
exception specified, it meets the unanimous approval of the committee, 
and I trust it will have the support of the House. I now yield to the 
gentleman from New York [Mr. Lapham]. 

Mr. Armfield. I hope the gentleman will jdeld to me a portion of 
Ms time. 

Mr. Robinson. What length of time does the gentleman require ? 

Mr. Armfield. Not more than five or ten minutes. 

Mr. Robinson. I will 3'ield to the gentleman from North Carolina 
after the gentleman from New York has concluded his remarks. 

Mr. Lapham. Mr. Speaker, but for the importance of the measure 
now under consideration I should not feel disposed to occup}^ the atten- 
tion of the House for any time. Prior to the act of 1870 three or four 
treaties had been made between the United States and foreign govern- 
ments which contained provisions relating to the subject of trade-marks 
with a view to reciprocity of rights between the owners and users of 
such trade-marks residing abroad and those transacting business in this 
country. Now, the trade-mark law of 1870 may be propeii}^ said to 
have been the outgrowth of such treaties; the beginning of a S3'stem 
calculated to secure these great ends to the people of both countries. 
Subsequent treaties were also made upon the same subject. But the 
question came before the Supreme Court of the United States in a 
criminal case under the penal provisions of the law of 1870, where 



FORTY-SIXTH CONGRESS. 488 

the law is held to its strictest accountabilit}^, and that court was com- 
pelled to decide that it was an infraction of the Constitution, because 
it covered in terms the entire subject of the use of trade-marks as well 
between citizens of the same State as between citizens of the different 
States and between citizens of this country and citizens of other coun- 
tries, and between citizens of this country and the Indian tribes. 

Let me call attention to two passages in the opinion of the Supreme 
Court which are illustrative of their ^dews on this subject. The court 
in one part of its opinion said: 

The question, therefore, whether the trade-mark bears such a relation to commerce- 
in general terms as to bring it within Congressional control, when used or applied to 
the classes of commerce which fall within that control, is one which in the present 
case we propose to leave undecided. 

So that it is fair to assume, if the law of 1870 had been confined to 
commerce between the States and between citizens and the Indian 
tribes and to foreign commerce, the court would have upheld the law 
as a valid exercise of the power of Congress under the Constitution » 
Such is the power expressly delegated by section 8 of that instrument. 
The committee, in this connection, for the purpose of relieving this 
bill of any doubt, have decided to leave out the subject of commerce 
between the States, because there is a present and pressing necessit}^, as 
I nope to show before I conclude, for the passage of some measure of 
this kind at the present time. 

In another part of the opinion the court uses this language: 

In what we have here said we wish to be understood as leaving the whole question 
of the treaty-making power of the General Government over trade-marks and the 
power of Congress to pass laws necessary to carry such treaties into effect untouched 
by this decision. 

So, Mr. Speaker, we have the two subjects of the power of this House 
and the power of Congress under the clause of the Constitution giving 
Congress a right to regulate commerce between the States and with 
the Indian tribes and foreign commerce. We have, I say, that subject 
left entirely untouched by the decision of the Supreme Court. We 
have also left entirely untouched the power of Congress to pass laws 
for the purpose of carrying into effect any treaties which we may 
have made or may hereafter make upon this subject. The Constitu- 
tion confides to the President and the Senate the treaty-making power, 
and when they have made a treaty it clothes Congress with the power 
to pass all needful legislation which may be deemed essential for the 
purpose of carr3dng that treaty into effect. 

If it be a treaty relating to trade-marks, then Congress has the 
power to legislate to carry it into effect, and this legislation is entirely 
proper. Now, as I have said, the bill under consideration, and strip- 
ping it of all possible objection, confines itself entirely to foreign 
commerce and commerce with the Indian tribes. 

There is perhaps, Mr. Speaker, no portion of the country so espe- 
cially interested in this subject as the great commeicial city of the 
State which I have the honor in part to represent. Gentlemen from 
that city appeared before us to represent their views with regard to the 
proposed law, and they gave us their opinions as to whether this bill 
was in accordance with the views expressed by the court in the opin- 
ion to which I have referred. 

In view of the provisions of this bill and of the urgent necessity of 
having it enacted into a law, I send to the Clerk's desk and ask to have 



484 EEVISION OF STATUTES RELATING TO PATENTS, ETC. 

read a communication received from one of those counsel, and a certi- 
ficate from a committee of the classes of persons interested in the same 
subject. The House will see from this the importance of the subject 
and the necessity for prompt and speedy action. 
The Clerk read as follows : 

New York, March 22, 1880. 
Dear Sik: It has occurred to me that you may prefer to be furnished with some 
evidence of the feehng of the pubhc in respect of the trade-mark bill. I therefore 
take the liberty of handing you a paper which speaks for a large class and w^hich 
explains itself. 

We accept, with thanks, what the committee proposes, but will hereafter give 
Congress a better view of facts which, we hope, may lead to different conclusions. 
With respect and esteem, your obedient servant, 

RowLAi^D Cox. 
Hon. Elbridge G. Lapham, Washington, D. C. 

The midersigned, a committee appointed by the United States Trade-Mark Asso- 
ciation, of New York, to conduct the advocacy of its interests before Congress, 
respectfully represent that they earnestly desire that favorable action may be taken 
upon the measure reported by the Committee on the Judiciary limiting^ the regis- 
tration of trade-marks to owners protected by treaties. They sign this paper to 
prevent the possibility of it being made to appear that said association is in any sense 
opposed to the speedy enactment of a measure demanded by every consideration of 
justice and good faith. 

Renauld, Francois & Co., 

Chas. Rexauld. 
Dixon Crucible Co., 

Orestes Cleveland. 
Glen Cove Starch Works, 

Wright Duryea. 
Colgate & Co., 

Bowles Colgate. 
Goodwin & Co., 
Charles G. Emery. 
Saml. E. Hiscox. 

Mr. Lapham. It will be seen from this communication, as well as 
from the letter of the Secretary of State, which my colleague upon 
the committee [Mr. Robinson] has had read, and from the letter of 
the Commissioner of Patents, which the gentleman from Iowa [Mr. 
McCoid] caused to be read, that there is an urgent necessit}^ at this 
time for having enacted into the form of law a provision which will 
guard our rights under the treaties which are now existing. Frauds 
upon trade-marks, which have been multiplied under the act of 1870, 
are almost as numerous, Mr. Speaker, as the trade-marks themselves. 
I have been furnished with a chart carried by one of the traveling 
agents of these pirates upon the rights of the owners of trade-marks of 
persons who have filed their applications and secured their rights to 
trade-marks between this countr}^ and Great Britain and the conti- 
nent of Europe, which I exhibit [holding up the chart] for the pur- 
pose of illustrating the extent to which this system is carried on. You 
here see the devices which a traveling agent for the pirates carries 
with him, being almost exact imitations of the actual trade-marks regis- 
tered under the law, with which he goes from man to man and from 
country to country, and imposes upon honest and unsuspecting pur- 
chasers a fraudulent article instead of the genuine article. This shows 
the necessity of the penal provisions of the bill in question. The 
imitations are about fift}^ in number, covering many of the leading 
manufactures used in commerce. 



FORTY-SIXTH CONGRESS. 485 

Thrice is he arm'd that hath his quarrel just. 

But the men who carry on this nefarious traffic are more than thrice 
m-med, as you will see from the specimens the agent carries along with 
him. 

I do not deem it necessary, Mr. Speaker, to dwell at greater length 
upon the necessity at this time of legislating upon this subject, and 
of passing the law which has met the approval of the Committee on 
the Judiciary, and which meets the approval of the counsel who are 
interested in this question. I can not close, however, without sa3dng 
a word or two upon another subject with reference to which my friend 
from Iowa [Mr. McCoid] is so deeply interested. While I concur in 
this legislation, and believe it ought to be adopted as a remedy for 
present evils, I am yet of the opinion that a law^ to be ample should 
not only secure the rights of persons engaged in foreign commerce 
and with the Indian tribes, but should secure the rights of people 
engaged in commerce among the different States, and should be carried 
to the extent of embracing the whole subject of trade-marks, State 
and national. 

What is a trade-mark ? The analogy between it and a patent is very 
strong indeed. It is the original discoverer who secured a patent right 
and only the original discoverer. It is the original finder of an article 
which a man can physicall}^ appropriate to his own use which gives him 
a right of property. If a man digs a nugget of gold out of the bowels 
of the earth, or^with a bar or pick cleaves it out of the crevices of the 
rock, he has the ph3^sical power to appropriate it at once to his use and 
it becomes his property. If it happen to have been a nugget lost by 
some one who had been a prior owner his discovery gives him no right 
of propert3\ So in the domain of patents; if a man invents, although 
he may be an original inventor as to himself, an article which had been 
previoush^ used bj^ someone else he acquires no right of property. 
It is only when he is not only the original but the first inventor that 
he can exercise and have the right. The same rule applies to trade- 
marks. 

Let me illustrate, Mr. Speaker, by two instances which occur to me. 

I remember a case arising in my own State, where an action was 
brought to restrain the owners of the Empire Spring, at Saratoga, from 
using upon their bottles the label "Congress Empire Spring." The 
proprietors of the Congress Spring filed the bill to restrain the use of 
that label upon the ground that it was a trade-mark to which they 
were entitled. The counsel for the defense, the Empire Spring, 
argued "You might as well go up on the mountain tops and bottle and 
label the air and claim an exclusive right to it as to claim the exclu- 
sive right to bottle and label the water as it bubbles from the per- 
petual springs in obedience to a law imposed upon matter by the 
hand of the Creator." But the court of last resort in my State said, 
" that by this use of the term or label 'Congress Spring,' which has 
been employed by the proprietors of that spring until the virtues of 
the water are known all over the civilized world, they have acquired 
a right which can not be invaded, and the insertion of the word ' Em- 
pire' between ' Congress' and ' Spring' is a mere device and does not 
excuse the person so using it from the consequences." And they 
held that the action was well brought. 

Take a case in reference to inventions. The late Ross Winans, of 
Baltimore, was without doubt an original inventor of the idea of the 



486 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

eight- wheel car to be used upon railroads, one of the most beneficial 
inventions in the whole history of railroads in this and in other coun- 
tries. It enables a long car to be run with speed and safety upon, 
down grades and short and reverse curves. So far as he was con- 
cerned the idea was his own, and yet when he came into court to 
try his title he was beaten. And how beaten? In building the Boston 
court-house, manv years before his invention, the contractors had 
brought down from the Quincy quarries upon a tramroad with short 
curves and steep grades, on four-wheel cars or trucks, the blocks of 
granite that went into the main walls of the building. When the 
contractor desired to transport the long columns which were to be 
placed in the front of the court-house he was put to his "trumps" — 
to use a familiar expression — to know what he should do. He did 
not know how to obviate the difficulty and danger. A common laborer 
stepped out of the ranks and said, ' ' I will tell you how to do that 
(it was the idea of the old-fashioned lumber wagon with a long reach 
put into it, to carry logs to the sawmill); take two of these" trucks 
and put them as far apart as the length of your column, and put a bar 
or reach between them, and you will get along without any trouble 
and run around the curves and on the down grade with safet5^" The 
contractor did so, and the courts held that, although that was all the 
use ever made of it, it was a complete answer to the claim of Mr. 
Winans for his invention, and he was defeated in his action. 

Therefore between this subject of patents and the subject of trade- 
marks there is a close analogy. The same reason which would induce 
me to have patents subject to national regulation would induce me to 
have trade-marks subject to national legislation and cop3aights subject 
to national legislation also. I am in favor of and believe that there 
will ultimately be found to be a necessity for a constitutional amend- 
ment upon this subject, giving to Congress the unquestioned power 
and entire control over the whole subject of trade-marks. The con- 
flicting legislation of thirty-eight States will not be ample for protec- 
tion at home and can not give it abroad. But for the present, because 
it takes time to secure the adoption of a constitutional amendment, to 
protect us for the present under our treaties and to save our reputa- 
tion with the nations with whom we are in treaty, I am in favor of 
passing this bill, which is not obnoxious to any objection, and waiting 
until the future to secure the better remedy which a constitutional 
provision will furnish us. 

I now return to the gentleman from Massachusetts [Mr. Robinson] 
the remainder of the time which he so kindly yielded to me. 

Mr. Armfield. 1 do not desire to protract the discussion or post- 
pone the vote on this bill; bvit as the bill under discussion bears the 
name of the Armiield bill I desire to say a word or two in regard to it. 

First of all, I desire to disclaim all responsibility for the bill in its 
present shape. It has been so altered by the committee that has had 
it in charge, both by leaving out what I put in and by putting in what 
I did not have in it and do not approve, that I must disclaim all respon- 
sibility^ for the paternity of the present bill. 

My principal object in framing the bill which I introduced was to 
afford protection to the trade-marks that are used in interstate com- 
merce. I regard the protection of trade-marks used in foreign com- 
merce as merely an incident of my main design. 



FORTY -SIXTH CONGRESS. 487 

I had then, and 1 beg leave to say that I have now, very little doubt 
of the constitutional power of Congress to legislate upon trade-marks 
used in the commerce between the States. The Committee on the 
Judiciary tell us in their report that we have no power under the Con- 
stitution to legislate in regard to trade-marks, except under the treaty- 
making power given b}^ the Constitution. They say in their report 
that while they think Congress can not so legislate with regard to trade- 
marks under the power to regulate commerce with foreign nations and 
among the several States and with the Indian tribes, yet they think 
that trade-marks used in the commerce with foreign nations and with 
the Indian tribes can be protected under the treaty-making power. 

Now, if this be so, if it be a fact that Congress has no power to 
legislate upon the subject of trade-marks except under the treaty- 
making power, then it is perfectly clear that the bill now under dis- 
cussion and reported from that committee is itself unconstitutional, 
because it has no reference whatever to the treaty -making power. 

The very first clause of the bill, stating what trade-marks may be 
registered, says "that owners of trade-marks used in commerce with 
foreign nations or with the Indian tribes " may register their trade- 
marks. There is no limitation upon the kind of trade-marks that 
may be registered except that it shall be a trade -mark used in com- 
merce with foreign nations or with the Indian tribes. 

There is a limitation as to the residence of the person who may 
register a trade-mark. The bill says, "provided such owners (of 
trade-marks) shall be domiciled in the United States, or located in any 
foreign country which, by treaty, convention, or law, affords similar 
privileges to citizens of the United States." That is not a restriction 
upon the kind of trade-mark to be protected. An}^ trade-mark used 
in foreign commerce or in commerce with the Indian tribes may be 
registered and shall be protected, provided the person applying for 
the registration and protection is domiciled in the United States or in 
a country that has a treaty with the United States or has a law pro- 
tecting the trade-marks of citizens of the United States. Therefore, 
upon the committee's own showing, upon the ground which they them- 
selves take, their bill is unconstitutional. But as I disagree with the 
committee in the conclusion to which they have arrived, there is no 
reason in all this why I should vote against their bill. 

I believe that Congress has the power to legislate for the protection 
of trade-marks. I understand the gentleman from New York [Mr. 
LaphamJ to differ from the report of the committee in this: He does 
not agree with the committee that the only power of legislating over 
trade-marks arises under the treat3^-making clause of the Constitu- 
tion. He believes with me, and not with the committee in their 
report, that Congress has this power under that clause of the Consti- 
tution which allows Congress to regulate commerce with foreign 
nations, with the Indian tribes, and between the States. He believes 
that under that clause we have the power to legislate upon the subject 
of trade-marks. But he sa^^s that, in order to remove all objections 
to the constitutionality of this bill, the committee have seen fft to 
leave out that part of my bill which protected trade-marks used in 
commerce between the States. 

Now, Mr. Speaker, I am utterly at a loss to see how this can remove 
any objection to the constitutionalit}^ of the bill. The clause of the 
Constitution which gives Congress power to legislate in regard to 
S. Doc. 20 32* 



488 REVISION OF STATUTES RELATING TO PATENTS, ETC 



commerce between the States is the veiy same clause that gives it 
power to legislate in regard to commerce with foreign nations and 
with the Indian tribes. The eighth section of article 1 of the Con- 
stitution provides that Congress shall have power — 

To regulate commerce with foreign nations, and among the several States, and 
with the Indian tribes. 

These different branches of commerce are all included within the 
same clause. If it be constitutional for Congress to legislate in 
regard to trade-marks used in commerce with foreign nations and with 
the Indian tribes it is equallj^ constitutional for Congress to legislate 
in reference to trade-marks used in interstate commerce. 

Mr. Lapham. The gentleman will allow me to say that the differ- 
ence is this: There can be no treaties made between the States or 
between a State and a foreign country. 

Mr. Armfield. That point might be good if the gentleman rested 
the authority upon the treat}^ -making power, which I understood him 
not to do. 

I regard it as of more importance to protect the trade-marks used 
in interstate commerce than to protect those used in foreign com- 
merce. Our first duty is to our own citizens. In any laws of this 
kind passed to prevent persons from being imposed upon by counter- 
feiting articles of food, medicine, or anything else, should we not first 
protect our own people and make the protection of foreigners a 
secondary consideration ? 

The trade-marks used in commerce between the States are much 
more valuable and numerous than gentlemen seem to suppose. These 
trade-marks are new things, which have sprung up within the last few 
years. The}^ were almost totally unknown to the courts of this coun- 
try and of Europe until the last decade. As illustrating the value of 
trade-marks, I may mention that there is one trade-mark used in my 
own State upon smoking tobacco which the owners claim is worth — 
the property in the trade-mark itself ^ — $100,000. 

But Mr. Chairman, although the committee have seen fit to strike 
out the clause relating to articles used in commerce between the 
States, I am willing to support the bill. It still contains some good 
features. It protects commerce with foreign nations, and enables us 
to perform our treaty obligations. For this reason I am willing to 
support it, provided the severe penalties embraced in it be struck out. 
The bill which I had the honor to introduce embraced no penal clauses. 
It did not make the violation of the law a criminal offense. I thought, 
and still think, that the civil remedies which the courts now give, and 
would give under this bill if these penal clauses were struck out, would 
be sufficient to protect the title to trade-marks. I am opposed upon 
principle to piling up penalties in the legislation of the country. I 
do not think it necessary, in order to protect trade-marks, that a man 
who violates the trade-mark law should be subjected to imprisonment 
for two years and a fine of $1,000, Nor do I think it necessar3% in 
order to protect trade marks, that we should allow a man to swear out 
a search warrant, enter the house of any citizen, and, if he finds in his 
possession counterfeited labels, to drag him before a court, indict him, 
and punish him criminally, if he can be convicted of having these 
counterfeited labels in his possession with intent to defraud. The 
question of intent would be for the jury to determine upon any evi- 
dence sac^isfactory to their miuds; and ^he mere fact that a man had in 



FOKTY-SIXTH CONGRESS. 489 

his possession counterfeited labels might be deemed sufficient to make 
him liable to imprisonment in the penitentiary for two years and a 
fine of 11,000. 

I shall, therefore, cordially support the motion of the gentleman 
from Georgia [Mr. Hammond] to strike out these penal clauses. If 
that motion should prevail I shall cheerfull}^ vote for the bill, because, 
although it does not go half so far as I think it ought to go, although 
it does not do all the good 1 desire to see done, yet I would take what 
I can get now and wait for further legislation in the future. 

Mr. Hammond, of Georgia. There are two or three formal amend- 
ments which I desire to offer on behalf of the committee, and also 
two amendments that I submit on my own behalf — one striking out 
section 20, the section authorizing searches; and the other striking 
out all the sections after section 13, being the penal parts of the bill. 

The remarks which have been made fully explain all these amend- 
ments. I send them now to the Clerk's desk, and if there be no objec- 
tion I desire they shall all be considered as pending, and I call for the 
previous question on the amendments and the bill. 

The Clerk read as follows: 

In section 1, insert, after the word ''country," the words "or tribes." 

In section 6, line 3, strike out the words ' ' by them. ' ' 

In section 16, lines 3 and 4; in section 17, lines 10 and 11; in section 18, lines 7 
and 8; and in section 19, lines 8 and 9, strike out the w^ords "the statutes of the 
United States" and insert "this act." 

Amend by striking out section 20; and 

Amend by striking out all of the bill after section 13, being the penal parts of the 
bill. 

Mr. Robinson. It is understood the first amendments read are by 
the whole committee, and the other motions to strike out are individ- 
ual motions of the gentleman from Georgia. 

Mr. Hammond, of Georgia. I so stated. 
* * * * * 

The clerk read the first amendment, as follows: 

Amend section 1 by adding, after the sixth line, the words "or tribes;" so it will 
read "or located in any foreign country or tribes." 

The amendment was agreed to. 

The Speaker pro tempore. If there be no objection, the second and 
third amendments which come from the committee will be considered 
as agreed to. 

There was no objection, and it was ordered accordingly. 

The Speaker pro tempore. The amendments moved by the gentle- 
man from Georgia [Mr. Hammond] will now be read. 

The Clerk read as follows: 

Strike out section 20, as follows: 

Sec. 20. That if the owner of any trade-mark, registered pursuant to the statutes 
of the United States, or his agent, make oath in writing that he has reason to 
believe, and does believe, that any counterfeit dies, plates, brands, engravings on 
wood, stone, metal, or other substance, or molds, of his said registered trade-mark 
are in the possession of any person, with intent to use the same for the purpose of 
deception and fraud, or makes such oaths that any counterfeits or colorable imita- 
tions of his said trade-mark, label, brand, stamp, wrapper, engraving on paper or 
other substance, or empty box, envelope, wrapper, case, bottle, or other package, to 
which is affixed the said registered trade-mark not so defaced, erased, obliterated, 
and destroyed as to prevent its fraudulent use, are in the possession of any person, 
with intent to use the same for the purpose of deception and fraud, then the several 
judges of the circuit and district courts of the United States and the commissioners 



490 REVISION OF STATUTES RELATII^a TO PATENTS, ETC. 

of the circuit courts may, within their respective jurisdictions, proceed under the 
law relating to search warrants, and may issue a search warrant authorizing and 
directing the marshal of the United States for the proper district to search for and 
seize all said counterfeit dies, plates, brands, engravings on wood, stone, metal, or 
other substance, molds, and said counterfeit trade-marks, colorable imitations 
thereof, labels, brands, stamps, wrappers, engravings on paper or other substance, 
and said empty boxes, envelopes, wrappers, cases, bottles, or other packages that 
can be found; and upon satisfactory proof being made that said counterfeit dies, 
plates, brands, engra^dngs on wood, stone, metal, or other substance, molds, coun- 
terfeit trade-marks, colorable imitations thereof, labels, brands, stamps, wrappers, 
engravings on paper or other substance, empty boxes, envelopes, wrappers, cases, 
bottles, or other packages, are to be used by the holder or owner for the purposes of 
deception and fraud, that any of said judges shall have full power to order all said 
counterfeit dies, plates, brands, engravings on wood, stone, metal, or other substance, 
molds, counterfeit trade-marks, colorable imitations thereof, labels, brands, stamps, 
wrappers, engravings on paper or other substance, empty boxes, envelopes, wrappers, 
cases, bottles, or other packages, to be publicly destroyed. 

* * * -x- ^ * -x- 

The bill was passed. 



[Senate, second session, April 29, 1880, Cong. Record, vol. 10, part 3, p. 2860.] 
HOUSE BILLS REFERRED. 

The bill (H. R. 5088) to authorize the registration of trademarks and 
protect the same, was read twice by its title, and, on motion of Mr. 
Conkling, referred to the Committee on the Judiciary. 

[Senate, third session, February 28, 1881, Cong. Record, vol. 11, part 3, p. 2195.] 

REPORTS OF COMMITTEES. 

-X- * * * * * * 

Mr. Conkling, from the committee to whom was referred the bill 
(H. R. 5088) to authorize the registration of trademarks and protect the 
same, reported it without amendment. 

[Senate, third session, March 1, 1881, Cong. Record, vol. 11, part 3, p. 2284.] 
REGISTRATION OF TRADEMARKS. 

The bill (H. R. 5088) to authorize the registration of trademarks and 
protect the same was considered as in Committee of the Whole. 

The bill was reported to the Senate, ordered to a third reading, read 
the third time, and passed. 

[House of Representatives, third session, March 1, 1881, Cong. Record, vol. 11, part 3, p. 2336.] 

ENROLLED BILLS SIGNED. 

* * * -X- * * * 

Mr. Upson, from the Committee on Enrolled Bills, reported that 
the committee had examined and found truly enrolled bill * * * 
of the following title; when the Speaker signed the same. 

A bill (H. K. 5088) to authorize the registration of trademarks and 
protect the same. 

[Senate, third session, March 2, 1881, Cong. Record, vol. 11. part 8, p. 2370.] 
MESSAGE FROM THE HOUSE. 

A message from the House of Representatives, by Mr. George M. 
Adams, its Clerk, announced * * ""' that the Speaker of the House 



FOETY-SIXTH COI^GEESS. 491 

had signed the following enrolled bills * * * and they were 
thereupon signed by the Vice-President. 

* * * -x- * * * 

A bill (H. R. 5088) to authorize the registration of trademarks and 
protect the same. 

[House of Representatives, third, session, March 3, 1881, Cong. Record, vol. 11, part 3, p. 2467.] 
APPROVAL OF BILLS, ETC. 

A message from the President, by Mr. Pruden, his secretary, informed 
the House that the President had approved and signed bills * * * 
of the following titles: 

An act (H. R. 5088) to authorize registration of trademarks and 
protect the same. 

The act is as follows: 

[21 U. S. Stat. L., 502, Ch. 188, approved March 3, 1881.] 
AN ACT to authorize the registration of trade-marks and protect the same. 

Be it enacted by the Senate and House of Representatives of the United States in Congress 
assembled, That the owners of trade-marlis used in commerce with foreign nations 
or with the Indian tribes, provided such owners shall be domiciled in the United 
States or located in any foreign country or tribes, which, by treaty, convention, or 
law, affords similar privileges to citizens of the United States, may obtain registra- 
tion of such trade-marks by complying with the following requirements: 

First. By causing to be recorded in the Patent Office a statement specifying name, 
domicile, location, and citizenship of the party applying; the class of merchandise, 
and the particular description of goods comprised in such class to which the particu- 
lar trade-mark has been appropriated; a description of the trade-mark itself, with 
facsimiles thereof, and a statement of the mode in which the same is applied and 
affixed to goods, and the length of time during which the trade-mark has been used. 

Second. By paying into the Treasury of the United States the sum of twenty-five 
dollars, and complying with such regulations as may be prescribed by the Commis- 
sioner of Patents. 

Sec. 2. That the application prescribed in the foregoing section must, in order to 
create any right whatever in favor of the party filing it, be accompanied by a writ- 
ten declaration verified by the person, or by a member of a firm, or by an officer of a 
corporation applying, to the effect that such party has at the time a right to the use 
of the trade-mark sought to be registered, and that no other person, firm, or corpora- 
tion has the right to such use, either in the identical form or in any such near resem- 
blance thereto as might be calculated to deceive; that such trade-mark is used in 
commerce with foreign nations or Indian tribes, as above indicated; and that the 
description and facsimiles presented for registry truly represent the trade-mark sought 
to be registered. 

Sec. 3. That the time of the receipt of any such application shall be noted and 
recorded. But no alleged trade-mark shall be registered unless the same appear to 
be lawfully used as such by the applicant in foreign commerce or commerce with 
Indian tribes, as above mentioned, or is within the provision of a treaty, convention, 
or declaration with a foreign power; nor which is merely the name of "the applicant; 
nor which is identical with a registered or known trade-mark owned by another, and 
appropriate to the same class of merchandise, or which so nearly resembles some 
other person's lavv'ful trade-mark as to be likely to cause confusion or mistake in the 
mind of the public, or to deceive purchasers. In an application for registration the 
Commissioner of Patents shall decide the presumptive lawfulness of claim to the 
alleged trade-mark; and in any dispute between an applicant and a previous regis- 
trant, or between applicants, he shall follow, so far as the same may be applicable, 
the practice of courts of equity of the United States in analogous cases. 

Sec. 4. That certificates of registry of trade-marks shall be issued in the name of 
the United States of America, under the seal of the Department of the Interior, and 
shall be signed by the Commissioner of Patents, and a record thereof, together with 
printed copies of the specifications, shall be kept in books for that purpose. Copies 
of trade-marks and of statements and declarations filed therewith, and certificates of 
registry so signed and sealed, shall be evidence in any suit in which such trade-marks 
shall be brought into controversy. 



492 EEVISION OF STATUTES EELATING TO PATENTS, ETC. 

Sec. 5. That a certificate of registry shall remain in force for thirty years from its 
date, except in cases where the trade-mark is claimed for and applied to articles not 
manufactured in this country, and in which it receives protection under the laws of 
a foreign country for a shorter period, in which case it shall cease to have any force 
in this country by virtue of this act at the time that such trade-mark ceases to be 
exclusive property elsewhere. At any time during the six months prior to the expi- 
ration of the term of thirty years such registration may be renewed on the same 
terms and for a like period. 

Sec. 6. That applicants for registration under this act shall be credited for any fee 
or part of a fee heretofore paid into the Treasury of the United States with intent to 
procure protection for the same trade-mark. 

Sec. 7. That registration of a trade-mark shall be prima facie evidence of owner- 
ship. Any person who shall reproduce, counterfeit, copy, or colorably imitate any 
trade-mark registered under this act and affix the same to merchandise of substan- 
tially the same descriptive properties as those described in the registration shall be 
liable to an action on the case for damages for the wrongful use of said trade-mark at 
the suit of the owner thereof; and the party aggrieved shall also have his remedy 
according to the course of equity to enjoin the wrongful use of such trade-mark used 
in foreign commerce or commerce with Indian tribes, as aforesaid, and to recover 
compensation therefor in any court having jurisdiction over the person guilty of such 
wrongful act; and courts of the United States shall have original and appellate juris- 
diction in such cases without regard to the amount in controversy. 

Sec. 8. That no action or suit shall be maintained under the provisions of this act 
in any case when the trade-mark is used in any unlawful business or upon any article 
injurious in itself, or which mark has been used with the design of deceiving the 
public in the purchase of merchandise, or under any certificate of registry fraud- 
ulently obtained. 

Sec. 9. That any person who shall procure the registry of a trade-mark, or of him- 
self as the owner of a trade-mark, or an entry respecting a trade-mark, in the office 
of the Commissioner of Patents, by a false or fraudulent representation or declara- 
tion, orally or in writing, or by any fraudulent means, shall be liable to pay any 
damages sustained in consequence thereof to the injured party, to be recovered in an 
action on the case. 

Sec. 10. That nothing in this act shall prevent, lessen, impeach, or avoid any 
remedy at law or in equity which any party aggrieved by any wrongful use of any 
trade-mark might have had if the provisions of this act had not been passed. 

Sec. 11. That nothing in this act shall be construed as unfavorably affecting a 
claim to a trade-mark after the term of registration shall have expired; nor to give 
cognizance to any court of the United States in an action or suit between citizens of 
the same State, unless the trade-mark in controversy is used on goods intended to be 
transported to a foreign country, or in lawful commercial intercourse with an Indian 
tribe. 

Sec. 12. That the Commissioner of Patents is authorized to make rules and regula- 
tions and prescribe forms for the transfer of the right to use trade-marks and for 
recording such transfers in his office. 

Sec. 13. That citizens and residents of this country wishing the protection of trade- 
marks in any foreign country, the laws of which require registration here as a con- 
dition precedent to getting such protection there, may register their trade-marks for 
that purpose as is above allowed to foreigners, and have certificate thereof from the 
Patent Office. 

S. 1751. — A bill to provide for the publication and registration of the title and claims 
to the property called trade-marks. Introduced by Hon. William 
W. Eaton, of Connecticut, May 12, 1880. Referred to the Committee 
on the Judiciary. Indefinitely postponed. 

[Senate, second session, May 12, 1880, Cong. Record, vol 10, part 4, p. 3265.] 
BILLS INTRODUCED. 

Mr. Eaton. I desire to introduce a bill drawn by a very valued and 
intelligent constituent of mine, and I should like to have it referred 
to the Committee on the Judiciar}^ It is for the publication and reg- 
istration of trademarks, a subject which I understand that committee 
have now in hand. 

By unanimous consent, leave was granted to introduce a bill (S. 1751) 



FORTY-SIXTH CONGRESS. 493 

to provide for the publication and registration of the title and claims 
to the property called trademarks; which was read twice by its title, 
and referred to the Committee on the Judiciary. 



[Senate, third session, February 28, 1881, Cong. Record, vol. 11, part 3, p. 2195.] 

REPORTS OF COMlVnTTEES. 

***** -x- * 

Mr. Conkling, from the Committee on the Judiciary, * * * to 
whom was referred the bill (S. 1751) to provide for the publication and 
registration of the title and claims to the property called trademarks, 
moved its indefinite postponement; which was agreed to. 

H . R. 6505. — A bill to provide for refunding of fees in all cases of void registration of trade 
marks. Introduced by Hon. Samuel S. Cox, of New York, December 
6, 1880. Referred to the Committee on the Judiciary. Not reported. 

[House of Representatives, third session, December 6, 1880, Cong. Record, vol. 11, part 1, p. 11.] 
VOID REGISTRATION OF TRADEMARKS. 

Mr. Cox also introduced a bill (H. R.' 6505) to provide for refund- 
ing of fees in all cases of void registration of trademarks; which was 
read a first and second time, referred to the Committee on the Judi- 
ciary, and ordered to be printed. 



H. Res. — A resolution requesting the Secretary of the Interior to inform the House 

under what authority the registration of trade marks is permitted. 

Introduced by Hon. N. J. Hammond, of Georgia, December 20, 1880. 

Referred to the Committee on the Judiciary. Reported and adopted. 

[House of Representatives, third session, December 20, 1880, Cong. Record, vol. 11, part 1, p. 270.] 

REGISTRATION OF TRADEMARKS. 

Mr. Hammond, of Georgia, submitted the following resolution; 
which was referred to the Committee on the Judiciary: 

Resolved, That the Secretary of the Interior be, and is hereby, requested to inform 
this House under and by what authority the registration of trade marks is permitted, 
and fees for such registration are charged and collected, since the Supreme Court of 
the United States, at its October term, 1879, in the case of Emil Steffins et al., v. The 
United States, decided that the enactments of Congress authorizing such registration 
and collection of fees are void because unconstitutional. 



[House of Representatives, third session, January 18, 1881, Cong. Record, vol. 11, part 1, p. 725.] 
REGISTRATION OF TRADEMARKS. 

Mr. Hainimond, of Georgia. The Committee on the Judiciary have 
directed me to report back a resolution of inquir}^ with the recom- 
mendation that it be adopted. 

The Speaker. It cannot be acted on during this call. The Chair 
will allow it to be reported now, and action can be taken on it under 
the rules immediately after the call of committees for reports has been 
concluded. The resolution will be read now. 

The Clerk read as follows: 

[The resolution is read as above.] 

Mr. Calkins. Is that resolution recommended by the Committee on 
the Judiciary for adoption ? 

The Speaker. It is; but it can not be acted on now. As soon as all 
of the committees shall have been called, the Chair will recognize the 
gentleman from Georg^ia to call up the resolution for action. The call 
of committees can not be interrupted. 



494 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

[House of Representatives, third session, January 18, 1881, Cong. Record, vol. 11, part 1, p. 727.] 
REGISTRATION OF TRADEMARKS. 

The Speaker. The gentleman from Georgia [Mr. Hammond] is now 
recognized to call up the resolution of inquir}^ from the Secretary of 
the Interior. 

Mr. Atkins. Will it give rise to much debate? 

Mr. Hammond, of Georgia. It will not. I send to the desk the reso- 
lution which the Committee on the eludiciaiy have directed me to 
report back with a favorable recommendation. 

The Clerk read as follows: 

[The resolution is read as above.] 

Mr. Keifer. I think the form of that resolution had better be 
changed; that it should be modified so as simply to make the inquiry, 
without giving any reason therefor. As it now reads it conveys a 
sort of reflection on the Secretary of the Interior, which I think 
should not be put in our resolution. 

Mr. Hammond, of Georgia. That is immaterial to me. It is simply 
giving the reason why we make the inquiry. 

Mr. Keifer. The reason had better not go into the resolution, for 
it would seem to indicate that the Secretary of the Interior has been 
and is doing something wrong. 

Mr. Hammond, of Georgia. Will the gentleman move some 
amendment ? 

Mr. Keifer. I make the suggestion to the gentleman who wants 
the information to strike out all that part of the resolution which 
refers to the decision of the Supreme Court. 

Mr. Hammond, of Georgia. I have no objection, so that we get the 
information. 

Mr. Keifer. M}^ motion would be to strike out all that relates to 
the case decided by the Supreme Court, and simply to call for infor- 
mation on the subject of registration of trademarks. 

Mr. Hammond, of Georgia. I have no objection to that, and I 
presume the committee will have none. 

The Speaker. The gentleman can not accept the amendment, but 
the Chair will submit it to the House. 

The question was taken upon the amendment proposed bj^Mr. Keifer; 
and it was agreed to. 

The resolution, as amended, was then adopted. 

[House of Representatives, third session, February 12, 1881, Cong. Record, vol. 11, part 2, p. 1521.] 
REGISTRATION OF TRADEMARKS. 

The Speaker also laid before the House a letter from the Secretary 
of the Interior, transmitting a report of the Commissioner of Patents 
relative to the registration of trademarks; which was referred to the 
Committee on Patents, and ordered to be printed. 



FORTY-SEVENTH CONGRESS. 

Five bills and one resolution were introduced in the House of Rep- 
resentatives in this Congress, and two bills and one resolution in the 
Senate. 

S. 155. — A bill to provide for refunding of fees in all cases of void registration of 
trade marks. Introduced by Hon. James Donald Cameron, of Penn- 
sylvania, December 6, 1881. Referred to the Committee on Patents. 
Reported adversely. Recommitted. 



FORTY-SEVENTH CONGRESS. 495 

[Senate, first session, Decembor 6, 1881, Cong, Record, vol. 13, part 1, p. 21.] 
BILLS INTRODUCED. 

Mr. Cameron, of Pennsylvania (by request,) asked and, by unanimous 
consent, obtained leave to introduce a bill (S. 155) to provide for 
refunding of fees in all cases of void registration of trademarks; 
which was read twice by its title, and orded to lie on the table, to be 
referred to the Committee on Patents when appointed. 

[Senate, first session, March 2, 1882, Cong. Record, vol. 13, part 2, p. 1540.] 
REPORTS OF COMMITTEES. 

Mr. Platt. I am instructed by the same committee [Patents] to 
report adversely the bill ( S. 155 ) to provide for refunding of fees in 
all cases of void registration of trademarks. Perhaps some Senator 
interested in the bill would desire to have it go upon the Calendar; 
otherwise I ask for its indefinite postponement. 

Mr. Garland. Is there a written report accompanying the bill ? 

Mr. Platt. There is no written report. 

Mr. Garland. Let it go upon the Calendar, then. 

The President pro tempore. The bill will be placed upon the 
Calendar, with the adverse report of the committee. 



[Senate, first session, April 13, 1882, Cong. Record, vol. 13, part 3, p. 2846.] 
FEES IN TRADEMARK CASES. 

The President pro tempore. The next case is reported adversely 
from the Committee on Patents. Does the Senator from Connecticut 
[Mr. Platt] wish that considered? It is the bill (S. 155) to provide for 
the refunding of fees in all cases of void registration of trademarks. 

Mr. Teller. Let that go over. 

The President j?7'(9 tempore. It is objected to, and will be passed 
over. 

Mr. CocKRELL. Why not have it indefinitely postponed ? 

Mr. Williams. I think it had just as well be indefinitely postponed. 
It was unanimously rejected by the committee. 

Mr. Platt. I think so. 

The President pro tempore. The bill will be indefinitely postponed 
if there be no objection. The Chair hears none and it is so ordered. 

[Senate, first session, April 14, 1882, Cong. Record, vol. 13, part 3, p. 2878.] 
FEES IN trademark CASES. 

Mr. Garland. Yesterday the bill (S. 155) to provide for the refund- 
ing of fees in all cases of void registration of trademarks was post- 
poned indefinitel}^ It was my intention to move to recommit that bill. 
The chairman of the Committee on Patents, the Senator from Connecti- 
cut [Mr. Platt], has no objection to its being recommitted. I now 
make the motion to reconsider the vote by which the bill was indefi- 
nitely postponed. 

The motion was agreed to. 

Mr. Garland. Now I move to recommit the bill to the Committee 
on Patents. 

The motion was agreed to. 

H. Res. 9. — A joint resolution proposing an amendment to the Constitution of the 
United States, to give Congress power to regulate trade marks. Intro- 
duced by Hon. Moses A. McCoid, of Iowa, December 13, 1881. Re- 
ferred to the Committee on the Judiciary. Not reported. 



496 EE VISION OF STATUTES RELATING TO PATENTS, ETC. 

[House of Representatives, first session, December 13, 1881, Cong. Record, vol. 13, part 1, p. 99.] 
AMENDMENT TO CONSTITUTION. 

Mr. McCoid also introduced a joint resolution (H. K. 9) proposing 
an amendment to the Constitution of the United States; which was read 
a first and second time, referred to the Committee on the Judiciary, 
and ordered to be printed. 

H. R. 1200. — A bill to amend an act entitled "An act to authorize the registration of 
trademarks and to protect the same, ' ' approved March 3, 1881. Intro- 
duced by Hon. R. F. Armfield, of North Carolina. Referred to the 
Committee on the Judiciary. Not reported. 

[House of Representatives, first session, December 16, 1881, Cong. Record, vol. 13, part 1, p. 169.] 

TRADEMARKS. 

Mr. Armfield also introduced a bill (H. R. 1200) to amend an act 
entitled ''An act id authorize the registration of trademarks and to 
protect the same," approved March 3, 1881; which was read a first and 
second time, referred to the Committee on the Judiciary, and ordered 
to be printed. 

S. Res. — A resolution concerning the refunding of fees in cases of void registration of 
trademarks. Introduced by Hon. Augustus H. Garland, of Arkansas, 
January 5, 1882. Adopted. Referred to the Committee on Patents. 

[Senate, first session, January 5, 1882, Cong. Record, vol. 13, part 1, p. 247.] 
TRADEMARK FEES. 

Mr. Garland. I offer the following resolution and ask for its present 
consideration: 

Resolved, That the Committee on Finance be instructed to inquire into the pro- 
priety of refunding to parties who paid for the protection, under the trade mark 
legislation, the fee required by the act of Congress touching that subject, which was 
decided by the Supreme Court of the United States, in the Trade-Mark Cases, (100 
U. S., 82), to be unconstitutional, and report by bill or otherwise. 

The Senate, by unanimous consent, proceeded to consider the 
resolution. 

Mr. Garland. I may briefly state that under the trademark law, as 
it existed before the Supreme Court passed upon its constitutionality, 
each applicant for this protection had to pay a fee of $25. The fee 
was paid in a great many instances. The matter was brought to the 
Supreme Court, and, as will be found in the one hundredth volume of 
reports, the court determined the act to be unconstitutional. These 
persons now, at least many of them, insist that they should be returned 
this fee of |25. While I believe that it should be returned, I am not 
prepared, without further investigation, to say absolutely that it should 
be; but I think it is a fit subject of inquiry for the Finance Committee, 
and I simply offer the resolution so that the committee may be instructed 
to inquire into the propriety of it. 

The resolution was agreed to. 

[Senate, first session, January 10, 1882, Cong. Record, vol. 13, part 1, p. 303.] 

REPORTS OF COMMITTEES. 

* ****** 

Mr. Morrill. I am instructed also by the Committee on Finance to 
report back a resolution introduced January 5, 1882, in relation to 



FORTY-SEVENTH CONGRESS. 497 

trademark fees, to ask to be discharged from its further consideration, 
and that it be referred to the Committee on Patents. 

The same subject was reported back by the Committee on Finance 
and referred to the Committee on Patents at the last session of Con- 
gress, with other papers. 

The report was agreed to. 



H. R. 4557. — A bill to provide for refunding of fees in all cases of void registration of 
trademarks. Introduced by Hon. Anson G. McCook, of New York, 
February 20, 1882. Referred to the Committee on Patents. Not 
reported. 

[House of Representatives, first session, February 20, 1882, Cong. Record, vol. 13, part 2, p. 1302.] 

TRADEMARKS. 

Mr. McCook (by request) also introduced a bill (H. R. 4557) to 
provide for refunding of fees in all cases of void registration of trade- 
marks; which was read a first and second time, referred to the Com- 
mittee on Patents, and ordered to be printed. 



S. 1440. — A bill relating to the registration of trademarks. Introduced by Hon. 
Orville H. Piatt, of Connecticut, March 10, 1882. Eeferred to the Com- 
mittee on Patents. Passed in Senate and House. Approved by the 
President, August 4, 1882. (22 U. S. Stat. L., p. 298, chap. 393.) 

[Senate, first session, March 10, 1882, Cong. Record, vol. 13, part 2, p. 1778.] 
BILLS INTRODUCED. 

He [Mr. Piatt] also asked, and, by unanimous consent, obtained leave 
to introduce a bill (S. 1440) relating to the registration of trademarks; 
which was read twice by its title, and, with the accompanying papers^ 
referred to the Committee on Patents. 



[Senate, first session, March 23, 1882, Cong. Record, vol. 13, part 3, p. 2190.] 
REPORTS OF COMMITTEES. 

* * * Mr. Piatt, from the Committee on Patents, to whom was 
referred the bill (S. 1440) relating to the registration of trademarks, 
reported it without amendment. 

[Senate, first session. May 12, 1882, Cong. Record, vol. 13, part 4, p. 3862.] 
REGISTRATION OF TRADEMARKS. 

The bill (S. 1440) relating to the registration of trademarks was 
considered as in Committee of the Whole. 

Mr. Platt. The bill was reported by the Committee on Patents. I 
propose an amendment to make it clear that it applies to nothing 
except what is now contemplated by the act relating to the registra- 
tion of trademarks. I propose to amend by inserting after the word 
''used," at the end of line 6, the words, " by the applicant in foreign 
commerce or commerce with Indian tribes;" so as to make the bill read: 

That nothing contained in the law entitled "An act to authorize the registration of 
trade marks and protect the same," approved March 3, 1881, shall prevent the regis- 
try of any lawful trade mark rightfully used by the applicant in foreign commerce 
or commerce with Indian tribes at the time of the passage of said act. 

The amendment was agreed to. 



498 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

The bill was reported to the Senate as amended, and the amendment 
was concurred in. 

The bill was ordered to be engrossed for a third reading, read the 
third time, and passed. 

[House of Representatives, first session, August 3, 1882, Cong. Record, vol. 13, part 7, p. 6850.] 
REGISTRATION OF TRADE3IARKS. 

Mr. Buck. 1 ask unanimous consent to take from the Speaker's 
table for present consideration the bill (S. 1440) relating to the regis- 
tration of trademarks. The reading of the bill will show what it is, 
and I think there can be no objection to it whatever. 

The bill was read as follows: 

Be it enacted, etc., That notMng contained in the law entitled "An act to authorize 
the registratioji of trademarks and protect the same," approved March 3, 1881, shall 
prevent the registry of any lawful trademark rightfully used by the applicant in 
foreign commerce or commerce with Indian tribes at the time of the passage of 
said act. 

Mr. Yance. The Committee on Patents has considered that bill and 
it has the unanimous sanction of the committee. It is considered 
right and proper that it should pass. 

Mr. Buck. 1 will not give an explanation unless some gentleman 
desires it. 

There being no objection, the bill was taken from the Speaker's 
table, read three times, and passed. 

[Senate, first session, August 5, 1882, Cong. Record, vol. 13, part 7, p. 6921.] 
MESSAGE FROM THE HOUSE. 

A message from the House of Representatives, by Mr. McPherson, 
its Clerk, announced " * ^ * that the Speaker of the House had 
signed the following enrolled bills; and they were thereupon signed 
by the President ^w tennjpore: 

* ->r * * -K- * * 

A bill (S. 1440) relating to the registration of trademarks. 



[House of Representatives, first session, August 5, 18^, Cong. Record, vol. 13, part 7, p. 6960.] 
ENROLLED BILLS SIGNED. 

Mr. Pierce, from the Committee on Enrolled Bills, reported that 
they had examined and found trul}^ enrolled bills of the following 
titles ; when the Speaker signed the same : 

* * ^ * * * * 

A bill (S. 1440) relating to the registration of trademarks. 

[Senate, first session, August 7, 1882, Cong. Record, vol. 13, part 7, p. 6998.] 
PRESIDENTIAL APPROVALS. 

A message from the President of the United States, b}^ INIr. O. L. 
Pruden, one of his secretaries, announced that the President had, on 
the 4th instant, approved and signed the following bills: 



FOETY-SEVENTH CONGRESS. 499 

An act (S. 14A0) relating to the registration of trademarks. 
The act is as follows: 

[22 U. S. Stat., p. 298, chap. 393. Approved August 4, 1882.] 
AN ACT relating to the registration of trade-marks. 

Be it enacted by the Senate and Souse of Representatives of the United States of Amer- 
ica in Congress assembled, That nothing contamed in the law entitled "An act to 
authorize the registration of trade-marks and protect the same," approved March 
third, eighteen hundred and eighty-one, shall prevent the registry of any lawful 
trade-mark rightfully used by the applicant in foreign commerce or commerce with 
Indian tribes at the time of the passage of said act. 



H. R. 5056. — A bill amending ' 'An act to amend the law relating to patents, trade- 
marks and copyrights." Introduced by Hon. John R. Buck, of 
Connecticut, March 13, 1882. Referred to the Committee on Patents. 
Not reported. 

[House of Representatives, first session, March 13, 1882, Cong. Record, vol. 13, part 2, p. 1838.] 
PATENTS, TRADEMARKS, ETC. 

Mr. Buck introduced a bill (H. R. 5056) amending an act to amend 
the law relating to patents, trademarks, and copyrights; which was 
read a first and second time, referred to the Committee on Patents, and 
ordered to be printed. 

H. R. 5057. — A bill amending an act entitled "An act to authorize the registration of 
trademarks and protect the same." Introduced by Hon. John R. 
Buck, of Connecticut, March 13, 1882. Referred to the Committee on 
Patents. H. R. No. 6688 reported as a substitute. 

[House of Representatives, first session, March 13, 1882, Cong. Record, vol. 13, part 2, p. 1838.] . 
PATENTS, TRADEMARKS, ETC. 

•vt * * -X- * % -X- 

Mr. Buck also introduced a bill (H. R. 5057) amending an act 
entitled ''An act to authorize the registration of trademarks and pro- 
tect the same;" which was read a first and second time, referred to the 
Committee on Patents, and ordered to be printed. 



H. R. 6688. — A bill relating to the registration of trade marks. Introduced by Hon. 
James M, Ritchie, of Ohio, July 1, 1882. Referred to the House 
Calendar. 

[House of Representatives, first session, July 1, 1882, Cong. Record, vol. 13, part 6, p. 5553.] 
REGISTRATION OF TRADEMARKS. 

Mr. Ritchie, from the Committee on Patents, reported as a substi- 
tute for House bill No. 5057, a bill (H. P. 6688) relating to the regis- 
tration of trademarks; which was read a first and second time, referred 
to the House Calendar, and, with the accompanying report, ordered to 
be printed. 

FORTY-EIGHTH CONGRESS. 

One bill was introduced in the House of Representatives in this 
Congress and one in the Senate. 

H. R. 4553. — A bill to amend the law in relation to the registration of trade marks. 
Introduced by Hon. Halbert S. Greenleaf, of New York, February 4, 
1882. Referred to the Committee on Patents. Reported. Referred 
to House Calendar. 



500 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

[House of Representatives, first session, February 4, 1884, Cong. Record, vol. 15, part 1, p. 862.] 
REGISTRATION OF TRADEMARKS. 

Mr. Greenleaf introduced a bill (H. R. 4553) to amend the law in 
relation to the registration of trademarks; which was read a first and 
second time, referred to the Committee on Patents, and ordered to be 
printed. 

[House of Representatives, second session, January 24, 1885, Cong. Record, vol. 16, part 2, p. 987.] 
REGISTRATION OF TRADEMARKS. 

Mr. Vance, from the Committee on Patents, reported back favor- 
ably a bill (H. R. 4553) to amend the law in relation to the registration 
of trademarks; which was referred to the House Calendar, and the 
accompanying report ordered to be printed. 

S. 2513. — A bill to amend the law in relation to the registration of trade marks. 
Introduced by Hon. Austin F. Pike, of New Hampshire, January 8, 
1885. Referred to the Committee on Patents. Not reported. 

[Senate, second session, January 8, 1885, Cong. Record, vol. 16, part 1, p. 541.] 

BILLS INTRODUCED. 
* * * * * * * 

He [Mr. Pike] also introduced a bill (S. 2513) to amend the law in 
relation to the registration of trademarks; which was read twice by its 
title, and referred to the Committee on Patents. 

FORTY-NINTH CONGEESS. 

Two bills were introduced in the Senate in this Congress. 

S. 1034. — A bill to amend the law relating to patents, trade marks, and copyrights 
Introduced by Hon. Orville H. Piatt, of Connecticut, January 12, 1886. 
Referred to the Committee on Patents. Indefinitely postponed. 

[Senate, first session, January 12, 1886, Cong. Record, vol. 17, part 1, p. 604.] 



BILLS INTRODUCED. 

•H- * * 



Mr. Piatt introduced a bill (S. 1034) to amend the law relating to 
patents, trademarks, and copyrights; which was read twice by its 
title, and referred to the Committee on Patents. 



[Senate, first session, March 9, 1886, Cong. Record, vol. 17, part 3, p. 2205.] 
REPORTS OF COMMITTEES. 

Mr. Gray, from the Committee on Patents, to whom was referred 
the bill (S. 1034) to amend the law relating to patents, trademarks, and 
copyright, moved its indefinite postponement, which was agreed 
to. * * * 



S. 1209.— A bill to amend the law in relation to the registration of trade marks. 
Introduced by Hon. Orville H. Piatt, of Connecticut, January 25, 1886. 
Eeferred to the Committee on Patents. Not reported. 



FOETY-NINTH CONGRESS. 501 

[Senate, first session, January 25, 1886, Cong. Record, vol. 17, part 1, p. 858.] 

BELLS INTRODUCED. 

****** ^fr 

Mr. Piatt introduced a bill (S. 1209) to amend the law in relation to 
the registration of trademarks; which was read twice by its title, and 
referred to the Committee on Patents. 



FIFTIETH CONGRESS. 

H. R. 7732. — A bill imposing a punishment for the counterfeiting of trade marks, 
labels, etc. Introduced by Hon. William D. Bynum of Indiana, Feb- 
ruary' 27, 1888. Referred to the Committee on Patents. Reported. 
Referred to the House Calendar. 

[House of Representatives, first session, February 27, 1888, Cong. Record, vol. 19, part 2, p. 1513.] 
•COUNTERFEITING TRADEMARKS, ETC. 

Mr. Bynmn introduced a bill (H. R. 7732) imposing punishment for 
the counterfeiting, etc., of trademarks, labels, etc.; which was read a 
first and second time, referred to the Committee on Patents, and 
ordered to be printed. 



[House of Representatives, first session, June 22, 1888, Cong. Record, vol. 19, part 6, p. 5480.] 
COUNTERFEITING TRADEMARKS, ETC. 

Mr. Smith, of Wisconsin, from the Committee on Patents, reported 
back with amendment the bill (H. R. 7732) imposing punishment for 
counterfeiting trademarks, labels, etc.; which was referred to the 
House Calendar, and, with the accompanying report, ordered to be 
printed. 

FIFTY-FIRST CONGRESS. 

Four bills were introduced in the House of Representatives in this 
Congress. 

H. R. 160. — A bill to amend "An act to authorize the registration of trade marks 
and protect the same," approved March 3, 1881. Introduced by Hon. 
William E. Simonds, of Connecticut, December 18, 1889. Referred 
to the Committee on Patents. Not reported. 

[House of Representatives, first session, December 18, 1889, Cong. Record, vol. 21, part 1, p. 230.] 
REGISTRATION OF TRADEMARKS. 

Mr. Simonds introduced a bill (H. R. 160) to amend "An act to 
authorize the registration of trade marks and protect the same," 
approved March 3, 1881; which was read a first and second time, 
referred to the Committee on Patents, and ordered to be printed. 



H. R. 260. — A bill imposing punishment for counterfeiting trade marks, labels, etc. 
Introduced by Hon. William D. Bynum, of Indiana, December 18, 1889. 
Referred to the Committee on the Judiciary. Reported adversely. 

[House of Representatives, first session, December 18, 1889, Cong. Record, vol. 21, part 1, p. 234. 
TRADEMARKS, ETC. 

Mr. Bynum introduced a bill (H. R. 260) imposing punishment for 
counterfeiting, etc., trademarks, labels, etc.; which was read a first 
and second time, referred to the Committee on the Judiciary, and 
ordered to be printed. 



502 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

[House of Representatives, first session, April 26, 1890, Cong. Record, vol. 21, part 4, p. 3913.] 
ADVERSE REPORTS. 

Under clause 2 of Rule XIII, adverse reports were delivered to the 
Clerk and disposed of as follows: 

By Mr. Reed, of Iowa, from the Committee on the Judiciary, on 
the bill (H. R. 260) imposing punishment for counterfeiting, etc., 
trademarks, labels, etc. — ordered to be printed and referred to the 
House Calendar. 

[House of Representatives, first session. May 27, 1890, Cong. Record, vol.21, part 6, p. 5367.] 
PETITIONS, ETC. 



By Mr. Wallace, of Massachusetts: Petition of the Massachusetts 
Association United Hatters of North America, praying passage of 
House bill 260 — to the Committee on Patents. 



[House of Representatives, first session, June 16, 1890, Cong. Record, vol. 21, part 7, p. 6161.] 

PETITIONS, ETC. 



By Mr. Haynes: Petitions of Sandusky Trade and Labor Assembly, 
favoring the passage of House bill 260, imposing a punishment for 
counterfeiting trademarks, etc. — to the Committee on the Judiciary. 



[Senate, first session, June 19, 1890, Cong. Record, vol. 21, part 7, p. 6241.] 

PETITIONS AND MEMORIALS. 

* * *• * -:;■ * * 

Mr. Vest presented a memorial of District Assembly, No. 4, Knights 
of Labor, St. Louis, Mo. , praying for the passage of House bill 260, 
for the punishment of parties counterfeiting trademarks, labels, etc. 
* * * which was referred to the Committee on Education and 
Labor. 



[House of Representatives, first session, July 12, 1890, Cong. Record, vol. 21, part 8, p. 7228.] 

PETITIONS, ETC. 
* * * -x- * * * 

By Mr. Hayes: Petition of the Cigar Makers' Union of Muscatine, 
Iowa, in favor of trademark bill — to the Committee on the Judiciary. 

Also, petition of Cigar Makers' Union of Davenport, Iowa, favoring 
same measure — to the Committee on the Judiciary, 



H. R. 3852. — A bill relating to patents, trade marlis, and copyrights. Introduced by 
Hon. William E. Simonds, of Connecticut, January 6, 1890. Referred 
to the Committee on Patents. Reported and referred to the House 
Calendar. 

[House of Representatives, first session, January 6, 1890, Cong. Record, vol. 21, part 1, p. 401.] 

PATENTS, TRADEMARKS, AND COPYRIGHTS. 

Mr. Simonds introduced a bill (H. R. 3812) relating to patents, trade- 
marks, and copyrights; which was read a first and second time, refer- 
red to the Committee on Patents, and ordered to be printed. 



FIFTY -FIRST CONGRESS. 503 

[House of Representatives, first session, February 6, 1890, Cong. Record, vol. 21, part 2, p. 1119.] 
PATENTS, TRADEMARKS, AND COPYRIGHTS. 

Mr. Simonds, from the Committee on Patents, reported back favor- 
abl}^ the bill (H. R. 3812) relating to patents, trademarks, and copy- 
rights; which, with the accompanying report, was ordered to be 
printed and recommitted. 

[House of Representatives, first session, February 18, 1890, Cong. Record, vol. 21, part 2, p. 1466.] 
PATENTS, TRADEMARKS, AND COPYRIGHTS. 

Mr. Simonds, from the Committee on Patents, reported back favor- 
bly the bill (H. R. 3812) relating to patents, trademarks, and copy- 
rights; which was referred to the House Calendar, and, with the accom- 
panying report, ordered to be printed. 



H. R. 10972. — A bill imposing punishment for connterfeiting trade marks, labels, etc. 
Introduced by Hon. William D. Bynum, of Indiana, June 16, 1890. 
Referred to the Committee on the Judiciary. Reported adversely. 

[House of Representatives, first session, .Tune 16, 1890, Cong. Record, vol. 21, part 7, p. 6160.] 

BILLS AND JOINT RESOLUTIONS. 

Under clause 3 of Rule XXII, bills * * * of the following titles 
were introduced, severally read twice, and referred as follows: * * * 

By Mr. Bynum: A bill (H. R. 10972) imposing punishment for 
counterfeiting, etc., trademarks, labels, etc. — to the Committee on the 
Judiciary. 



[House of Representatives, first session, June, 24, 1890, Cong. Record, vol. 21, part 7, p. 6464.] 

REPORTS OF COMMITTEES. 

***** -x- * 

Mr. Reed, of Iowa, from the Committee on the Judiciary, reported 
adversel}^ the bill of the House (H. R. 10972) imposing punishment for 
counterfeiting, etc., trademarks, labels, etc., accompanied by a report 
(No. 2539); which (by request) was referred to the House Calendar. 



FIFTY-SECOND CONGRESS. 

Six bills were introduced in the House of Representatives in this 
Congress, and three bills and one resolution in the Senate. 

S. 454. — A bill to authorize the registration of trade marks and protect the same. 
Introduced by Hon. Frank Hiscock, of New York, December 10, 
1891. Referred to the Committee on Patents. Not reported. 

[Senate, first session, December 10, 1891, Cong. Record, vol. 23, part 1, p. 31.] 

BILLS INTRODUCED. 

******* 

He [Mr. Hiscock] also introduced a bill (S. 454) to authorize the 
registration of trademarks and protect the same; which was read twice 
by its title, and referred to the Committee on Patents. 



S. 984. — A bill to reenact the act entitled "An act to punish the counterfeiting of 
trade mark goods and the sale of or dealing in counterfeit goods." 
Introduced by Hon. Frank Hiscock, of New York, December 15, 1891. 
Eeferred to the Committee on Patents. Not reported. 

S. Doc. 20 33* 



504 EEVISION OF STATUTES RELATIIS'G TO PATENTS, ETC. 

[Senate, first session, December 15, 1891, Cong. Record, vol. 23, part 1, p. 65.] 

BILLS INTRODUCED. 
******* 

Mr. Hiscock introduced a bill (S. 984) to reenact the act entitled 
*'An act to punish the counterfeiting- of trade mark goods and the sale 
of or dealing in counterfeit trade mark goods;" which Avas read twice 
by its title, and referred to the Committee on Patents. 



H. R. 94. — A bill imposing punishment for counterfeiting trade marks, labels, etc. 
Introduced by Hon. William D. Bynum, of Indiana, January 5, 1892. 
Referred to the Committee on the Judiciary. Not reported. 

[House of Representatives, first session, January 5, 1892, Cong. Record, vol. 23, part 1, p. 127.] 

COUNTERFEITING TRADEMARKS, ETC. 

By Mr. B3mum: A bill (H. R. 94) imposing punishment for coun- 
terfeiting, etc., trademarks, labels, etc. — to the Committee on the 
Judiciary. 



H. R. 584. — A bill providing penalties for violation of the laws relating to trade marks. 
Introduced by Hon. John J. O'Neill, of Missouri, January 7, 1892. 
Referred to the Committee on Patents. H. R. 9528 reported as sub- 
stitute. 

[House of Representatives, first session, January 7, 1892, Cong. Record, vol. 23, part 1, p. 204.] 

TRADEMARKS. 

By Mr. O'Neill, of Missouri: A bill (H. R. 584) providing penalties 
for violation of the laws relating to trademarks — to the Committee on 
Patents. 



[Hous=i of Representatives, first session, March 30. 1892, Cong. Record, vol. 23, part 3, p. 2749.] 

PETITIONS, ETC. 

By Mr. McAleer. * * * Also, petition of citizens of Phila- 
delphia, favoring bill 584, providing penalties for violation of trade- 
marks — to the Committee on Patents. 



[House of Representatives, first session, April 7, 1892, Cong. Record, vol. 23, part 4, p. 3072.] 
PETITIONS, ETC. 

B}^ Mr. Busey: Petition ®f Samuel A. Pichmond, of Tuscola, 111., 
favoring the passage of House bill 584, providing penalties for violat- 
ing laws relating to trademarks — to the Committee on Patents. 



[House of Representatives, first session, April 11, 1892, Cong. Record, vol. 23, part 4, p. 3185.] 
PETITIONS, ETC. 

By Mr. Patterson, of Tennessee: Petition in support of House bill 
584, to prevent violation of trademarks — to the Committee on Patents. 

-X- -X- ^ * * * * 

By Mr. Keyburn. * * * Also (by request), petition for a change 
in the laws relating to trademarks — to the Committee on Patents. 



FIFTY-SECOND COiSTGRESS. 505 

[House of Representatives, first session, April 18, 1892, Cong. Record, vol. 23, part 4, p. 3402.] 



* * -x- ^ * * * 

By Mr. Storer': * * * Also, petition of the United States Print- 
ing 'Company of Cincinnati, praying for the passage of House bill 58-i, 
known as the trademark bill — to the Committee on Patents. 



[House of Representatives, first session, April 19, 1892, Cong. Record, vol. 23, part 4, p. 3434.] 

PETITIONS, ETC. 
■X- -x- * * * * * 

By Mr. Newberry: * * * Petition of Libby, McNeill & Libby 
and L. C. Young praying the passage of the bill introduced b}^ Hon. 
J. J. O'Neill, of Missouri, known as House bill 584 — to the Committee 
on Patents. 



[House of Representatives, first session, April 22, 1892, Cong. Record, vol. 23, part 4, p. 3555.] 

PETITIONS, ETC. 

****** * 

By Mr. Tracey: Petition of citizens of West Tro}^, favoring the 
passage of the O'Neill bill, H. R. 584 — to the Committee on Patents. 



[House of Representatives, first session, Maj- 13, 1892, Cong. Record, vol. 23, part 5, p. 4276.] 

PETITIONS, ETC. 
****** * 

By Mr. Stevens: Petition of the Shaw Stocking Company, of Low- 
ell, Mass., asking for favorable action on House bill 584 — to the Com- 
mittee on Patents. 



[House of Representatives, first session, May 21, 1892, Cong. Record, vol. 23, part 5, p. 4537.] 

PETITIONS, ETC. 
******* 

By Mr. Charles W. Stone: Petition of citizens of Warren County, 
Pa., in favor of House bill 584, providing penalties for violation of 
trademark laws — to the Committee on Patents. 



[House of Representatives, first session, July 23, 1892, Cong. Record, vol. 23, part 7, p. 6687.] 

PETITIONS, ETC. 

* * * * * * * 

By Mr. O'Neill, of Missouri: Eight petitions of citizens and resi- 
dents, as follows: Four petitions of citizens of New York City, two of 
Lowell, Mass., one of Philadelphia, Pa., and one of the State of Rhode 
Island, all petitioning for the enactment as law the bill known as House 
bill No. 584, relating to trademarks — to the Committee on Patents. 



H. R. 5573. — A bill relating to patents, trade marks, and copyrights. Introduced by 
Hon. Oscar Lapham, of Rhode Island, February 8, 1892. Referred to 
the Committee on Patents, H. R. 9528 reported as a substitute. 



506 EEVISION OF STATUTES RELATING TO PATENTS, ETC. 

[House of Representatives, first session, February 8, 1892, Cong. Record, vol. 23, part 1, p. 951.] 

BILLS INTRODUCED. 
* * * * * * * 

By Mr. Lapham: A bill (H. R. 5573) relating to patents, trademarks, 
and copyrights — to the Committee on Patents. 



H. E. 5760. — A bill to amend an act entitled "An act to authorize the registration of 
trade marks and protect the same," approved March 3, 1881. Intro- 
duced by Hon. Ashbel P. Fitch, of New York, February 10, 1892. 
Referred to the Committee on Patents. H. R. 9528 reported as a 
substitute. 

[House of Representatives, first session, February 10, 1892, Cong. Record, vol. 23, part 2, p. 1042.] 

BILLS INTRODUCED. 

******* 

By Mr. Fitch: A bill (H. R. 5760) to amend an act entitled ''An act 
to authorize the registration of trade marks and protect the same," 
approved March 3, 1881 — to the Committee on Patents. 



[House of Representatives, first session, February 18, 1892, Cong. Record, vol. 23, part 2, p. 1286.] 

TRADEMARKS. 

Mr. Heard, from the Committee on Patents, reported back adversely 
the bill (H. R. 5760) to amend an act entitled ''An act to authorize the 
registration of trade marks and protect the same," approved March 3, 
1881; which was laid on the table, and the accompanying report ordered 
to be printed. 



H. R. 7216. — A bill to authorize the registration of trade marks and protect the same. 
Introduced by Hon. Ashbel P. Fitch, of New York, March 14, 1892. 
Referred to the Committee on Patents. Not reported. 

[House of Representatives, first session, March 14, 1892, Cong. Record vol. 23, part 3, p. 2072.] 

BILLS INTRODUCED. 

* * •«• * * * * 

By Mr. Fitch: A bill (H. E. 7216) to authorize the registration of 
trademarks and protect the same — to the Committee on Patents. 



H. R. 9528. — A bill to authorize the registration of trade marks and labels and protect 
the same. Introduced by Hon. Osee M. Hall, of Minnesota, from the 
Committee on Patents, July 13, 1892. Reported as substitute for H. R. 
584, 5573, 5760. 

[House of Representatives, first session, July 13, 1892, Cong. Record, vol. 23, part 6, p. 6125.] 
REGISTRATION OF TRADEMARKS AND LABELS. 

Mr. Hall, from the Committee on Patents, reported, as a substitute 
for the bills H. R. 584, 5760, 5573 * ^ * a bill (H. R. 9528) to 
authorize the registration of trademarks and labels and protect the 
same; which was read twice, and, with the accompanying report, 
ordered to be printed. 



S. 3478. — A bill relating to the registration of trade marks. Introduced by Hon. 
Orville H. Piatt, of Connecticut, July 27, 1892. Referred to the Com- 
mittee on Patents. Not reported. 



FIFTY-SECOND CONGRESS. 507 

[Senate, first session, July 27, 1892, Cong. Record, vol. 23, part 7, p. 6831.] 

BILLS introducp:d. 

* * * * -x- * * 

Mr. Piatt introduced a biir(S. 3478) relating to the registration of 
trademarks: which was read twice by its title, and referred to the Com- 
mittee on Patents. 



S. Res. — A resolution concerning the enforcement of the provisions of treaties with 
respect to patents 'and trade marks. Introduced bv Hon. Orville H. 
Piatt, of Connecticut, March 3, 1893. Adopted. 

[Senate, second session, March 3, 1898, Cong. Record, vol. 24, part 3, p. 2482.] 

PATENTS AND TRADEMARKS. 

Mr. Platt. I have had lying on ni}^ desk for at least four da^^s a 
resolution which I desire to have passed. I will send it to the desk to 
be read. 

•X- -H- % -:^ * * w 

The Senate, by unanimous consent, proceeded to consider the reso- 
lution; which was read, as follows: 

Resolved, That the Commissioner of Patents is requested to ascertain what legisla- 
tion, if any, is necessary to enforce the provisions of existing treaties or conventions 
with foreign countries with respect to patents and trade marks, or to secure to citizens 
of the United States the enjoyment of privileges in foreign countries corresponding 
to those enjoyed by the citizens or subjects of such countries in the United States, 
and to report his conclusions to the Senate at the next session of Congress. 

Mr. Hoar. I move to strike out the words " Commissioner of Pat- 
ents," and insert in lieu thereof the words " Secretary of the Interior." 

-H- * * * * * * 

The amendment was agreed to. 

The resolution as amended was agreed to. ' 

FIFTY-THIRD CONGRESS. 

Ten bills were introduced in the House of Representatiyes in this 
Congress, and one in the Senate. 

H. R. 1901. — A bill to authorize the registration of trademarks and protect the same. 
Introduced by Hon. Ashbel P. Fitch, of New York, September 9, 1893. 
Referred to the Committee on Patents. Not reported. 

[House of Representatives, first session, September 9, 1893, Cong. Record, vol. 25, pt. 2, p. 1359.] 

BILLS, MEMORIALS, AND RESOLUTIONS. 

•K- * * -H- * * * 

By Mr. Fitch: A bill (H. R. 1901) to authorize the registration of 
trademarks and protect the same — to the Committee on Patents. 



H. E. 1902. — A bill to amend an act entitled "An act to authorize the registration ot 
trade marks and protect the same," approved March 3, 1881. Intro- 
duced by Hon. Ashbel P. Fitch, of New York, September 9, 1893. 
Referred to the Committee on Patents., Not reported. 



508 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

[House of Representatives, first session, September 9, 1893, Cong. Record, vol. 25, pt. 2, p. 1359.]' 

BILLS, MEMORIALS, AND RESOLUTIONS. 

^ -s?- * * * * * 

By Mr. Fitch: * ^ * Also a bill (H. K. 1902) to amend an act 
entitled "An act to authorize the registration of trademarks and pro- 
tect the same," approved March 3, 1881 — to the Committee on Patents. 



H. R. 1984. — A bill to authorize the registration of trade marks and labels and to pro- 
tect the same. Introduced by Hon. Osee Matson Hall, of Minnesota, 
September 9, 1893. Referred to the Committee on Patents. Not 
reported. 

[House of Representatives, first session, September 9, 1893, Cong. Record, vol. 25, part 2, p. 1361.] 

BILLS, MEMORIALS, AND RESOLUTIONS. 

* -^ * * * * * 

By Mr. Hall, of Minnesota: '^ ^ ^ Also a bill (H. R. 1981) to 
authorize the registration of trademarks and labels, and to protect the 
same — to the Committee on Patents. 



H. R. 3460. — A bill relating to patents, trade marks, and copyrights. Introduced by 
Hon. Oscar Lapham, of Rhode Island, September 25, 1893, Referred 
to the Committee on Patents. Not reported. 

[House of Representatives, first session, September 25, 1893, Cong. Record, vol. 25, part 2, p. 1774.] 



By Mr. Lapham: A bill (H. E. 3160) relating to patents, trade- 
marks, and cop3^rights — to the Committee on Patents. 



H. R. 5862. — A bill appointing commissioners to revise the statutes relating to patents, 
trade and other marks. Introduced by Hon. Gaston A. Robbins, of 
Alabama, February 17, 1894. Referred to Committee on Patents. 
Not reported. 

[House of Representatives, second session, February 17, 1894, Cong. Record, vol. 26, part 3, p. 2273.] 

PUBLIC BILLS, memorials; AND RESOLUTIONS. 

* % * * * -H- * 

By Mr. Robbins (by request): A bill (H. R. 5862) appointing com- 
missioners to revise the statutes relating to patents, trade and other 
marks — to the Committee on Patents. 



H. R 5874. — A bill to authorize the registration of trade marks and labels, and to 
protect the same. Introduced by Hon. Osee Matson Hall, of Minne- 
sota, February 19, 1894. Referred to the Committee on Patents. 
Not reported. 

[House Oi Representatives, second session, February 19, 1894, Cong. Record, vol. 26, part 3, p. 2300. ] 

PUBLIC BILLS AND RESOLUTIONS INTRODUCED. 

* ■x- * * * -)?• * 

By Mr. Hall, of Minnesota: A bill (H. R. 5871) to authorize the 
registration of trademarks and labels, and to protect the same — to the 
Committee on Patents. 



H. R. 6441. — A bill to authorize the registration of trade marks and labels, and to 
protect the same. Introduced by Hon. Osee INIatson Hall, of jNIinne- 
sota, INIarch 26, 1894. Referred to the Committee on Patents. Not 
reported. 



FIFTY-THIRD CONGRESS. 509 

[House of Representatives, second session, March 26, 1894, Cong. Record, vol. 26, part 4, p. 3252;] 

PUBLIC BILLS AXD RESOLUTIONS. 
* * -x- * ^ * * 

B}' Mr. Hall, of Minnesota: A bill (H. R. O-iil) to authorize the reg- 
istration of trademarks and labels, and to protect the same — to the 
Committee on Patents. 



S. 2015. — A bill to authorize the registration of trade marks and labels, and to protect 
the same. Introduced by Francis M. Cockrell, of Missouri, May 11, 
1894. Referred to the Committee on Patents. Not reported. 
[Senate, second session, May 11, 1894, Cong. Record, vol. 26, part 5, p. 4590.] 



BILLS INTRODUCED. 

■K- -it 75- 



Mr. Cockrell (by request) introduced a bill (S. 2015) to authorize 
the registration of trademarks and labels, and to protect the same; 
which was read twice by its title, and referred to the Committee on 
Patents. 



H. R. 7669. — A bill for the protection of trade marks and labels. Introduced by 
Hon. Osee Matson Hall, of Minnesota, July 9, 1894. Referred to the 
Committee on the Judiciary. Not reported. 

[House of Representatives, second session, July 9, 1894, Cong. Record, vol. 26, part 7, p. 7229.] 

PUBLIC BILLS, MEMORIALS, AND RESOLUTIONS. 

¥r vr ^ -H- * * * 

By Mr. Hall, of Minnesota: A bill (H. R. 7669) for the protection 
of trademarks and labels — to the Committee on the Judiciary. 



H. R. 7835. — A bill to authorize the registration of trade marks and labels, and to 
protect the same. Introduced by Hon. Osee Matson Hall, of Min- 
nesota, July 27, 1894. Referred to the Committee on Patents. Not 
reported. 

[House of Representatives, second session, July 27, 1894, Cong. Record, vol. 26, part 8, p. 7969.] 



PUBLIC BILLS AND RESOLUTIONS. 
* * * 



By Mr. Hall, of Minnesota: A bill (H. R. 7835) to authorize the 
registration of trademarks and labels, and to protect the same — to the 
Committee on Patents. 



H. R. 8533. — A bill to provide for the registration or trade marks on bottles, siphons, 
butts, hogsheads, barrels, half barrels, casks, half casks, quarter casks, 
kegs, boxes, tins, and other receptacles and vessels used in commerce 
with foreign nations or among the several States, or with the Indian 
tribes, or among or in the Territories of the United States, or with or 
in the District of Columbia, and to prevent the fraudulent use of the 
same in such commerce. Introduced by Hon. Richard Bartholdt, of 
Missouri, January 16, 1895. Referred to the Committee on the Judi- 
ciary. Not reported. 
[House of Representatives, third session, January 16, 189-5, Cong. Record, vol. 27, part 2, p. 1051.] 

PUBLIC BILLS AND RESOLUTIONS. 

^ * * ,; * * * 

By Mr. Bartholdt: A bill (H. R. 8533) to provide for the registra- 
tion of trademarks on bottles, siphons, butts, hogsheads, barrels, half 
barrels, casks, half casks, quarter casks, kegs, boxes, tins, and other 
receptacles and vessels used in commerce with foreign nations or among 



510 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

the several States, or with the Indian tribes, or among or in the Terri- 
tories of the United States, or with or in the District of Columbia, and 
to prevent the fraudulent use of the same in such commerce — to the 
Committee on the Judiciary. 

FIFTY-FOUKTH CONGRESS. 

Seven bills were introduced in the House of Representatives in this 
Congress and three in the Senate. 

H. R. 1675. — A bill to provide for the registration of trade marks on bottles, siphons, 
butts, hogsheads, barrels, half barrels, casks, half casks, quarter casks, 
kegs, boxes, tins, and other receptacles and vessels used in commerce 
with foreign nations or among the several States, or with the Indian 
tribes, or among or in the Territories of the United States or with or 
in the District of Columbia, and to prevent the fraudulent use of the 
same in such commerce. Introduced by Hon. Richard Bartholdt, of 
Missouri, December 16, 1895. Referred to the Committee on Com- 
merce. H. R. 7477 reported as a substitute. 

[House of Representatives, first session, December 16, 1895, Cong. Record, vol. 28, part 1, p. 183.] 

PUBLIC BILLS, MEMORIALS, AND RESOLUTIONS. 

* * * * * * * 

Bj Mr. Bartholdt: A bill (H. R. 1675) to provide for the registra- 
tion of trademarks on bottles, siphons, butts, hogsheads, barrels, half 
barrels, casks, half casks, quarter casks, kegs, boxes, tins, and other 
receptacles and vessels used in commerce with foreign nations or among 
the several States, or with the Indian tribes, or among or in the Ter- 
ritories of the United States, or with or in the District of Columbia, 
and to prevent the fraudulent use of the same in such commerce — to 
the Committee on Commerce. 

H. R. 2304. — A bill to amend the act of Congress relating to patents, trade marks, and 
copyrights. Introduced by Hon. Charles G. Bennett, of New York, 
December 20, 1895. Referred to the Committee on Patents. Not 
reported. 

[House of Representatives, first session, December 20, 1895, Cong. Record, vol. 28, part 1, p. 272.] 

PUBLIC BILLS, MEMORIALS, AND RESOLUTIONS. 

* * X- * * * * 

By Mr. Bennett. * * * A bill (H. R. 2304) to amend the act of 
Congress relating to patents, trademarks, and copyrights — to the Com- 
mittee on Patents. 

S. 1236. — A bill amending chapter 2 of the Revised Statutes relating to trademarks. 
Introduced by Hon. Orville H. Piatt, of Connecticut, December 30, 
1895. Referred to the Committee on Patents. Not reported. 

[Senate, first session, December 30, 1895, Cong. Record, vol. 28, part 1, p. 410.] 

BILLS INTRODUCED. 

* * * * * * * 

Mr. Piatt introduced a bill (S. 1236) amending chapter 2 of the 
Revised Statutes, relating to trademarks; which was read twice by its 
title, and referred to the Committee on Patents. 

8. 1627. — A bill to amend sections 1, 2, 3, 6, 7, and 11 of an act entitled "An act to 
authorize the registration of trademarks, and protect the same," 
approved March '3, 1881. Introduced by Hon. George G. Vest, of 
Missouri, January 20, 1896. Referred to the Committee on Patents. 
Not reported. 



FIFTY-FOrRTH OOXGRESS. 511 

[Senate, first session, January 20. 1896, Cong. Record, vol. 28, part 1, p. 785.] 
BILLS IXTRODUCED. 



Mr. Vest (by request) introduced a bill (S. 1627) to amend sections 
1. 2, 3, 6, 7, and 11 of an act entitled "An act to authorize the regis- 
tration of trademarks, and protect the same," approved March 3, 1881; 
which was read twice by its title, and, with the accompanying paper, 
referred to the Committee on Patents. 



H. E. 4349. — A bill to create State trademarks and to protect and promote foreign 
and interstate commerce. Introduced by Hon. Edward Sauerhering, 
of Wisconsin, January 20, 1896. Referred to the Committee on 
Patents. Not reported. 

[House of Representatives, first session, January 20, 1896. Cong. Record, vol. 28, part 1, p. 810.] 
PUBLIC BILLS, MEMORIALS, AND RESOLUTIOXS. 



By Mr. Sauerhering: A bill (H. R. 1:31:9) to create State trademarks 
and to protect and promote foreign and interstate commerce — to the 
Committee on Patents. 

H. R. 6402. — A bill for the protection of trademarks and labels. Introduced by Hon. 
Thomas W. Phillips, of Pennsylvania, Fel^ruary 21, 1896. Referred 
to the Committee on Patents. Xot reported. 

[House oi Representatives, first session, February 21, 1896, Cong. Record, vol. 28, part 3, p. 2040.] 

PUBLIC BILLS, MEMORIALS, AND RESOLUTIOXS. 

* * * * -H- * * 

By Mr. Phillips (by request): A bill (H. R. 61:02) for the protection 
of trademarks and labels — to the Committee on Patents. 



H. R. 6577. — A bill to authorize the registration of trademarks and labels, and to pro- 
tect the same. Introduced by the Hon. William F. Draper, of Massa- 
chusetts, February 26, 1896. Referred to the Committee on Patents. 
Not reported. 

[House of Representatives, first session, February 26, 1896, Cong. Record, vol. 28, part 3, p. 2190.] 

PUBLIC BILLS. MEMORIALS. AXD RESOLUTIONS. 

* -it * % -.7 ^ % 

By Mr. Draper: A bill (H.R. 6577) to authorize the registration of 
trademarks and labels, and to protect the same — to the Committee on 
Patents. 

H. R. 7477. — A bill to provide for the registration of trademarks on bottles, siphons, 
butts, hogsheads, barrels, half barrels, casks, half casks, quarter casks, 
kegs, boxes, tins, and other receptacles and vessels used in commerce 
with foreign nations, or among the several States, or with the Indian 
tribes, or among or in the Territories of the United States or with or 
in the District of Columbia, and to prevent the fraudulent use of the 
same in such commerce. Introduced by Hon. John B. Corliss, of 
Michigan, of the Committee on Interstate and Foreign Commerce, 
March 23, 1896, as a substitute for H. R. 1675. Passed in House. 
Referi-ed to the Senate CoUiinittee on Patents. Xot reported. 



512 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

[House of Representatives, first session, March 23, 1896, Cong. Record, vol. 28, part 4, p. 3112,] 
REPORTS OF COMMITTEES. 



Mr. Corliss, from the Committee on Interstate and Foreign Com- 
merce, to which was referred House bill No. 1675, reported in lieu 
thereof a bill (H. R. 7^77) to provide for the registration of trade-marks, 
on bottles, siphons, butts, hogsheads, barrels, half barrels, casks, half 
casks, quarter casks, kegs, boxes, tins, and other receptacles and vessels 
used in commerce with foreign nations, or among the several States, 
or with the Indian tribes, or among or in the Territories of the United 
States, or with or in the District of Columbia, and to prevent the 
fraudulent use of the same in such commerce, accompanied by a report 
(No. 884) — which said bill and report were referred to the House 
Calendar. 



[House of Representatives, first session, May 18, 1896, Cong. Record, vol. 28, part 6, p. 5380.] 
REGISTRATION OF TRADEMARKS. 

Mr. Corliss. Mr. Speaker, I am directed by the Committee on 
Interstate and Foreign Commerce to move to suspend the rules and 
ask for the present consideration of the bill which I send to the clerk's 
desk. 

The bill was read as follows: 

A BILL (H. R. 7477) to provide for the registration of trade-marks on bottles, siphons, butts, hogsheads, 
barrels, half barrels, casks, half casks, quarter casks, kegs, boxes, tins, and other receptacles and ves- 
sels used in commerce with foreign nations, or among the several States, or with the Indian tribes, 
or among or in the Territories of the United States, or with or in the District of Columbia, and to 
prevent the fraudulent use of the same in such commerce. 

Be it enacted, etc. That any and all persons, firms, and corporations engaged in 
manufacture, bottling, packing, or selling soda water, mineral or aerated waters, 
porter, ale, beer, cider, ginger ale, milk, cream, small beer, lager beer, weiss beer, 
white beer, or other beverages, or medicines, medical preparations, perfumery, com- 
pounds, mixtures, or other articles of merchandise in bottles, siphons, butts, hogs- 
heads, barrels, half barrels, casks, half casks, quarter casks, kegs, boxes, tins, or 
other receptacles or vessels, with his, her, its, or their name or names or other 
marks or devices branded, stamped, engraved, etched, blown, impressed, or other- 
wise produced upon such bottles, siphons, butts, hogsheads, barrels, half barrels, 
casks, half casks, quarter casks, kegs, boxes, tins, or other receptacles or vessels used 
by him, her, it, or them in commerce with foreign nations, or among the several 
States, or with the Indian tribes, or among or in the Territories of the United States, 
or with or in the District of Columbia, may obtain registration of such name or 
names or other marks or devices so used, as follows: Any such person, firm, or cor- 
poration may file in the Patent Ofiice of the United States, to be recorded, a written 
statement specifying the name, domicile, citizenship, place or places of business and 
post-ofiice address of such person, firm, or corporation, and giving a description and 
a facsimile of the name or names, or other marks or devices so used by him, her, it, 
or them, respectively, and the usual name of the article or articles manufactured, 
bottled, packed, or sold by such owner in such bottles, siphons, butts, hogsheads, 
barrels, half barrels, casks, half casks, quarter casks, boxes, kegs, tins, other recep- 
tacles, or vessels, said statement declaring that such person, firm, or corporation is, 
at the time of such filing, the owner of such bottles, siphons, butts, hogsheads, bar- 
rels, half barrels, casks, half casks, quarter casks, kegs, boxes, tins, or other recep- 
tacles or vessels, and that the same are used in commerce with foreign nations, or 
among the several States, or with the Indian tribes, or among or in the Territorries 
of the United States, or with or in the District of Columbia, and that such person, 
firm, or corporation has at the time a right to the use of such name or names, or 
other marks or devices, sought to be registered, and that no other person, firm, or cor- 
poration has the right to such use, either in the identical form or in any such near 
resemblance thereto as might be calculated to deceive; and said statement shall be 



FIFTY -FOUETH CONGEESS. 518 

sworn to by such person, or by a member of such firm, or an officer of such corpo- 
ration before a notary pubhc or other officer competent to administer oaths, who 
shall attach his official seal to the same: Provided, hoicever. That for each such state- 
ment so filed, and at the time the same is filed, the person, firm, or corporation 
filing the same shall pay into the Treasury of the United States the sum of $25 as a 
fee for such registration, and shall comply with such regulations as may be prescribed 
by the Commissioner of Patents: Provided further, That no registration shall be allowed 
under this act except by persons, firms, or corporations domiciled in the United States 
or located in any foreign country, or tribes which, by treaty, convention, or law, afford 
similar privileges to citizens of the United States. 

Sec. 2. That when any registration has been made as provided in section 1 of this 
act the Commissioner of Patents may issue a certificate in the name of the United 
States of America, under the seal of the Department of the Interior, and signed by 
said Commissioner, stating and specifying the name, place or places of business, and 
post-office address of the person, firm, or corporation obtaining such registration as 
owner, and giving a description of the registered name or names, or other marks or 
devices, so used on such bottles, siphons, butts, hogsheads, barrels, half barrels, 
casks, half casks, quarter casks, kegs, boxes, tins, or other receptacles or vessels fully 
as set forth in said statement filed under section 1 of this act, and such certificate 
shall state that such name or names, or other marks or devices, have been registered 
by such owner in accordance with this act, giving the title and date hereof. Such 
certificate of the Commissioner of Patents shall, in any prosecution under this act, 
be prima facie evidence of registration in accordance with this act, and also prima 
facie evidence that the person, firm, or corporation so registered as owner is the true 
owner of the bottles, siphons, butts, hogsheads, barrels, half barrels, casks, half 
casks, quarter casks, kegs, boxes, tins, or other receptacles or vessels, the name or 
names, or other marks or devices, on which have been so registered. 

Sec. 3. That after the name or names, or other marks or devices, Avhich appear on. 
any bottles, siphons, butts, hogsheads, barrels, half barrels, casks, half casks, quarter 
casks, kegs, boxes, tins, or other receptacles or vessels have been registered as pro- 
vided in section 1 of this act, any person, firm, or corporation who shall use in traffic 
any such bottles, siphons, butts, hogsheads, barrels, half barrels, casks, half casks, 
quarter casks, kegs, boxes, tins, or other receptacles or vessels, or make the same the 
subject of commerce with foreign nations, or among the several States, or with the 
Indian tribes, or among or in the Territories of the United States, or with or in the 
District of Columbia, shall be guilty of a misdemeanor, and upon conviction thereof 
shall pay a fine of not more than $300, or be imprisoned not more than four months, 
or both, at the discretion of the court. 

Sec. 4. That nothing in this act contained shall prevent, lessen, impeach, or avoid 
any remedy at law or in equity which any party aggrieved by any wrongful use or 
sale of such bottles, siphons, butts, hogsheads, barrels, half barrels!! casks, half casks, 
quarter casks, kegs, boxes, tins, or other receptacles or vessels might have had if this 
act had not been passed. 

Sec. 5. That the Commissioner of Patents is authorized to make rules and regula- 
tions and prescribe forms for the transfer of the said certificates of registration, and 
for recording the said transfers in his office. 

The Speaker. Is a second demanded ? 
There was no demand for a second. 

Two-thirds voting in favor thereof, the rules were suspended and 
the bill passed. 



[Senate, first session, May 19, 1896, Cong. Record, vol. 28, part 6, p. 5415.] 

HOUSE BILLS REFERRED. 
******* 

The bill (H. R. 7477) * * * was read twice by its title, and 
referred to the Committee on Patents. 



H. R. 8892. — A bill to authorize the registration of trademarks and to protect the- 
same. Introduced by Hon. William F. Draper, of Massachusetts^ 
May 12, 1896. Referred to the Committee on Patents. Not reported. 



514 

[House of Representatives, first session, May 12, 1896, Cong. Record, vol. 28, part 6, p. 5151]. 
PUBIJC BILLS, MEMORIALS, AND RESOLUTIONS. 

By Mr. Draper. A bill (H. R. 8892) to authorize the registration of 
trademarks and to protect the same — to the Committee on Patents. 



S. 3698. — A bill appointing commissioners to revise the statutes relating to patents, 
trades, and other marks. Introduced by Hon. Orville H. Piatt, of 
Connecticut, February 15, 1897. Referred to the Committee on Pat- 
ents. Reported without amendment. 

[Senate, second session, February 15, 1897, Cong. Record, vol. 29, part 2, p. 1826.] 
BILLS INTRODUCED. 



Mr. Piatt introduced a bill (S. 3698) appointing commissioners to 
revise the statutes relating to patents, trades, and other marks; which 
was read twice bv its title, and referred to the Committee on Patents. 



[Senate, second session, February 22, 1897, Cong. Record, vol. 29, part 3, p. 2078.] 

REPORTS OF COMMITTEES. 

* ^- -X- * * * * 

Mr. Piatt, from the Committee on Patents, to whom was referred the 
l)ill (S. 3698) appointing commissioners to revise the statutes relating 
1:o patents, trades, and other marks, reported it without amendment. 

FIFTY-FIFTH CONGRESS. 

Eight bills were introduced in the House of Representatives in this 
Congress and four in the Senate. 

H. R. 33. — A bill to authorize the registration of trademarks, and to protect the same. 
Introduced by Hon. Charles F. Sprague, of Massachusetts, March 15, 
1897. Referred to the Committee on Patents. Not reported. 

[House of Representatives, first session, March 15, 1897, Cong. Record, vol. 30, part 1, p. 20.] 
PUBLIC BILLS, MEMORIALS, AND RESOLUTIONS INTRODUCED. 



B}^ Mr. Sprague. * * * Also, a bill (H. K. 33) to authorize the 
registration of trademarks, and to protect the same — to the Committee 
on Patents. 

H. R. 72. — A bill to provide for the registration of trademarks on bottles, siphons, 
butts, hogsheads, barrels, halt barrels, casks, half casks, quarter casks, 
kegs, boxes, tins, and other receptacles and A'essels used in commerce 
with foreign nations, or among the several States, or with the Indian 
tribes, or among or in the Territories of the United States, or with or 
in the District of Columbia, and to prevent the fraudulent use of the 
same in such commerce. Introduced by Hon. John B. Corliss, of 
Michigan, March 15, 1897. Passed in House. Referred to Senate 
Committee on Patents. 



riFTY -FIFTH CONGRESS. 515 

[House of Representatives, first session. March 15, 1897, Cong. Record, vol. 30, part 1, p. 21.] 
PUBLIC BILLS, MEMORIALS, AND RESOLUTIONS INTRODUCED. 
* «- -K- -X- * ->:- vi- 

By Mr. Corliss. A bill (H. R. 72) to provide for the registration of 
trademarks on bottles, siphons, butts, hogsheads, barrels, half barrels, 
casks, half casks, quarter casks, kegs, boxes, tins, and other recepta- 
cles and vessels used in commerce with foreign nations, or among the 
several States, or with the Indian tribes, or among or in the Terri- 
tories of the United States or with or in the District of Columbia, and 
to prevent the fraudulent use of the same in such commerce — to the 
Committee on Patents. 



[House of Representatives, second session, February 25, 1898, Cong. Record, vol. 31, part 3, p. 2213.]; 
REPORTS OF COMMITTEES. 



Mr. Hicks, from the Committee on Patents, to which was referred 
the bill of the House (H. R. 72), * * * reported the same with- 
out amendment, accompanied by a report (No. 549); which said bill 
and report were referred to the House Calendar. 

[House of Representatives, second session, April 18, 1898, Cong. Record, vol. 31, part 5, pp. 4056, 4057.] 
TRADEMARKS ON BOTTLES, ETC. 

Mr. HicKS. Mr. Speaker, I desire to call up House bill No. 72, to 
provide for the registration of trademarks on bottles, siphons, butts, 
hogsheads, barrels, half barrels, casks, half casks, quarter casks, kegs, 
boxes, tins, and other receptacles and vessels used in commerce with 
foreign nations, or among the several States, or with the Indian tribes, 
or among or in the Territories of the United States, or with or in the 
District of Columbia, and to prevent the fraudulent use of the same in 
such commerce. 

The bill was read, as follows: 

Be it enacted, etc., That any and all persons, firms, and corporations engaged in 
manufacturing, bottling, packing, or selling soda water, mineral or aerated waters, 
porter, ale, beer, cider, ginger ale, milk, cream, small beer, lager beer, weiss beer, 
white beer, or other beverages, or medicines, medical preparations, perfumery, com- 
pounds, mixtures, or other articles of merchandise in bottles, siphons, butts, hogs- 
heads, barrels, half barrels, casks, half casks, quarter casks, kegs, boxes, tins, or 
other receptacles or vessels, with his, her, its, or their name or names or othermarks 
or devices branded, stamped, engraved, etched, blown, impressed, or otherwise pro- 
duced upon such bottles, siphons, butts, hogsheads, barrels, half iDarrels, casks, half 
casks, quarter casks, kegs, boxes, tins, or other receptacles or vessels used by him, 
her, it, or them in commerce with foreign nations, or among the several States, or 
with the Indian tribes, or among or in the Territories of the United States, or with 
or in the District of Columbia, may obtain registration of such name or names or 
other marks or devices so used, as follows: Any such person, firm, or corporation 
may file in the Patent Office of the United States, to be recorded, a written statement 
specifying the name, domicile, citizenship, place or places of business, and post-office 
address of such person, firm, or corporation, and giving a description and a facsimile 
of the name or names, or other marks or devices so used by him, her, it, or them, 
respectively, and the usual name of the article or articles manufactured, bottled, 
packed, or sold by such owner in such bottles, siphons, butts, hogsheads, barrels, 
half barrels, casks, half casks, quarter casks, boxes, kegs, tins, or other receptacles 
or vessels, said statement declaring that such person, firm, or corporation is, at the 



516 KEVISIOIS' OF STATUTES RELATING TO PATENTS, ETC. 

■time of such filing, the owner of such bottles, siphons, butts, hogsheads, barrels, half 
barrels, casks, half casks, quarter casks, kegs, boxes, tins, or other receptacles or 
T^essels, and that the same are used in commerce with foreign nations, or among the 
.several States, or with the Indian tribes, or among or in the Territories of the United 
States, or with or in the District of Columbia, and that such person, firm, or corpora- 
tion has at the time a right to the use of such name or names, or other marks or 
devices, sought to be registered, and that no other person, firm, or corporation has 
the right to such use, either in the identical form or in any such near resemblance 
thereto as might be calculated to deceive; and said statement shall be sworn to by 
such person, or by a member of such firm, or an officer of such corporation before a 
notary public or other officer competent to administer oaths, who shall attach his 
official seal to the same: Provided, however, That for each such statement so filed, and 
at the time the same is filed, the person, firm, or corporation filing the same shall pay 
into the Treasury of the United States the sum of |25 as a fee for such registration, 
and shall comply with such regulations as may be prescribed by the Commissioner 
■of Patents: Provided further, That no registration shall be allowed under this act 
except by persons, firms, or corporations domiciled in the United States or located in 
any foreign country, or tribes which, by treaty, convention, or law, afford similar 
privileges to citizens of the United States. 

Sec. 2. That when any registration has been made as provided in section 1 of this 
act the Commissioner of Patents may issue a certificate in the name of the United 
States of America, under the seal of the Department of the Interior, and signed by 
said Commissioner, stating and specifying the name, place, or places of business, and 
post-office address of the person, firm, or corporation obtaining such registration as 
owner, and giving a description of the registered name or names, or other marks or 
devices, so used on such bottles, siphons, butts, hogsheads, barrels, half barrels, casks, 
half casks, quarter casks, kegs, boxes, tins, or other receptacles or vessels fully as set 
forth in said statement filed under section 1 of this act, and such certificate shall 
■state that such name or names, or other marks or devices, have been registered by 
;such owner in accordance with this act, giving the title and date hereof. Such cer- 
tificate of the Commissioner of Patents shall, in any prosecution under this act, be 
prima facie evidence of registration in accordance with this act and also prima facie 
^.evidence that the person, firm, or corporation so registered as owner is the true 
'Owner of the bottles, siphons, butts, hogsheads, barrels, half barrels, casks, half casks, 
quarter casks, kegs, boxes, tins, or other receptacles or vessels, the name or names, 
or other marks or devices, on which have been so registered. 

Sec. 3. That after the name or names, or other marks or devices, w^hich appear on 
.any bottles, siphons, butts, hogsheads, barrels, half barrels, casks, half casks, quarter 
■ casks, kegs, boxes, tins, or other receptacles or vessels have been registered as pro- 
vided in section 1 of this act, any person, firm, or corporation who shall use in 
traffic any such bottles, siphons, butts, hogsheads, barrels, half barrels, casks, half 
casks, quarter casks, kegs, boxes, tins, or other receptacles or vessels, or make the 
same the subject of commerce with foreign nations, or among the several States, or 
with the Indian tribes, or among or in the Territories of the United States, or with 
or in the District of Columbia, shall be guilty of a misdemeanor, and upon convic- 
tion thereof shall pay a fine of not more than $300, or be imprisoned not more than 
four months, or both, at the discretion of the court. 

Sec. 4. That nothing in this act contained shall prevent, lessen, impeach, or avoid 
any remedy at law or in equity which any party aggrieved by any wrongful use or 
sale of such bottles, siphons, butts, hogsheads, barrels, half barrels, casks, half casks, 
quarter casks, kegs, boxes, tins, or other receptacles or vessels might have had if 
this act had not been passed. 

Sec. 5. That the Commissioner of Patents is authorized to make rules and regula- 
tions and prescribe forms for the transfer of the said certificates of registration, and 
for recording the said transfers in his office. 

^ ^- * -x- * * -x- 

The Speaker. The question is on the third reading- of the bill, the 
title of which will be read. 
The Clerk read as follows: 

A bill (H. R. 72) to provide for the registration of trade-marks on bottles, siphons, 
butts, hogsheads, barrels, half barrels, casks, half casks, quarter casks, kegs, boxes, 
tins, and other recej^tacles and vessels used in commerce with foreign nations, or 
among the several States, or with the Indian tribes, or among or in the Territories 
of the United States, or with or in the District of Columbia, and to prevent the 
fraudulent use of the same in such commerce. 



FIFTY-FIFTH CONGKESS. 517 

Mr. McMiLLix. I ask consent that the bill be reported again. 

The Speaker. Without objection, the bill will be again read. 

Mr. Hicks. I think if my friend from Tennessee will hear the 
Teport it will satisfy him in regard to this matter. The bill has 
already been read at length. 

Mr. McMiLLiN. I onl}^ wanted to get some idea of the nature of 
the bill. If the report shows that sufficiently, I am entirely willing 
that it be read instead of having the bill read again. 

Mr. Bailey. I thought the question was on the third reading of the 
bill. 

The Speaker. It is. If there be no objection, the Clerk will pro- 
ceed with the reading. 

Mr. Bailey. I simply desire to say that if this matter will occupy 
much time I would ask the Chair to appoint the conferees, in the hope 
that our conferees might, as soon as possible, confer with those of the 
Senate, and that we may dispose of this matter before both Houses 
adjourn to-night. 

The Speaker. The Chair desires to say that he expects of the House 
the usual courtes}^ with regard to his appointments. It is not his pur- 
pose to delay the matter beyond what is necessary, and whatever he 
may do, he again says, will be under the eyes of the House. 

Mr. Bailey. And everybody on this side is entirely willing for the 
Chair to take a proper time; but I understood the Chair to sa}^, in 
response to my inquiry, that the Chair was ready to name them at 
any time. 

The Speaker. The gentleman misunderstood the Chair. 

Mr. Bailey. I did. I understood the Chair to say that. 

Mr. BouTELLE, of Maine. I ask for the regular order, Mr. Speaker, 
if there is any regular order. 

The Speaker. The Clerk will proceed with the reading of the bill. 

The bill H. R. 72 was again read. 

Mr. Hicks. Mr. Speaker, does any gentleman desire to make any 
remarks on this bill? If not, I ask that it be placed upon its passage. 

The Speaker. The question is upon the engrossment and third read- 
ing of the bill. 

Mr. Hopkins. Before that is done, I think there ought to be some 
•explanation of this bill. 

Mr. Corliss. I ask for the reading of the report. 

Mr. Hopkins. This is a matter of very great importance to the 
manufacturing and commercial interests of the country, and it ought 
not to pass this body without being well understood. 

Mr. Hicks. I hold in my hand the report of the committee, giving, I 
think, full and sufficient reasons why this bill should become a law. 
I can not express myself in better language than I did in my report. 
I therefore ask for the reading of the report. 

The Speaker. The Clerk will read the report. 

The report (by Mr. Hicks) was read, as follows: 

The Committee on Patents, to whom was referred the bill (H. R. 72) to provide 
for the registration of trade-marks on bottles, siphons, casks, etc. , and other vessels 
nsed in commerce with foreign nations or among the several States, etc.. submit the 
following report: 

This bill is an important measure, and the subject-matter thereof was carefully con- 
sidered by the Committee on Patents, first by a subcommittee and then in general 
committee, and the voice of the committee was unanimous in favor of the speedy 
enactment of the measure into law. This same measure was considered in the Fifty- 



518 REVISION OF STATUTES RELATING- TO PATENTS, ETC. 

fourth Congress by the Committee on Interstate and Foreign Commerce, and that 
committee said in their report: 

' ' This measure is intended to protect not only the rehable manufacturers and mer- 
chants against the unlawful use of receptacles well known and established in the 
markets as containing reliable goods, but also seeks to especially preserve for the con- 
sumer the original article and prevent the substitution of cheap and spurious mer- 
chandise in casks, boxes, and other receptacles known to contain reliable articles of 
merchandise in the first instance. 

"This measure will extend the wise provisions of the trade-mark to the casks, 
bottles, and other receptacles. The importance of its provisions has been urged for 
many years by the leading business concerns, boards of trade, and commercial jour- 
nals of the country. The Oil, Paint and Drug Reporter, one of the leading trade 
journals, in the interest of its patrons has urged the adoption of such a law, and the 
necessity for the passage of this bill seems urgent from the information received in 
the consideration thereof." 

Numerous petitions were presented to your committee, representing many indus- 
tries and manufacturing institutions, all of which urge the necessity of the protection 
granted in the pending bill. It is claimed by these industries and institutions that 
there is not in the law, as it now exists, adequate protection against the dishonest 
and fraudulent use of labels and trade-marks. Genuine articles sold by honest dealers, 
under skillfully designed and selected trade-marks, are so frequently the subject of 
piracy and dishonest dealing that the public are continually imposed upon, as well 
as retail dealers, who have difficulty in distinguishing the good from the bad and the 
real from the imitations. In view of the importance of honesty and fair dealing in 
business and trade, and the protection of the honest manufacturer, who is proud of 
his "trade-mark" and name, from the fraudulent dealer who depends upon his 
ability to impose his worthless articles upon an unsuspecting public by reason of his 
ability to unlawfully appropriate an honest trade-mark to further his imposition and 
fraud, it is, in the judgment of your committee, important to our manufacturing 
industries that this bill become a law, and they therefore urge its speedy enactment. 

Mr Hicks. Mr. Speaker, this measure Avas reported to the Fift}^- 
fourth Congress b}' the Committee on Interstate and Foreign Com- 
merce. It was unanimously reported by that committee and passed 
the House. ' In this Congress it was referred to the Committee on 
Patents and unanimously reported from that committee. We believe 
it to be a meritorious measure. I ask for the passage of the bill. 

Mr. RoBBiNS. I should like to ask the gentleman in charge of this 
bill whether it affects the liquor industr}^ of the country in any way? 
There was a bill recently passed authorizing the branding of corks, 
etc. I see this bill provides for labels and trademarks on bottles. 

Mr. Hicks. I ^^eld sufficient time to my friend, Mr. Corliss, of 
Michigan, the author of the bill, who can explain fully to my colleague 
the object of the measure. 

Mr. Corliss. In answer to the inquiry of the gentleman, I will state 
that the liquor associations desire the passage of this measure, for the 
reason that under the present condition of affairs when a cask or 
bottle is stamped as containing a recognized liquor, there is now no 
protection under national law to prevent the substitution of a spurious 
article. 

Man}^ of the States have this law, but if a person manufactures 
liquor or any other substance that is to be sold in a cask or a bottle, 
he is not protected against the retailer taking the bottle or cask which 
is supposed to contain good whisky or some other standard article, 
putting in a spurious article, and selling it to the public under the old 
label, thereby deceiving customers. There is a great deal of com- 
plaint against this sort of thing, and there is no doubt that this is a 
good bill. ' 

The bill was ordered to be engrossed and read a third time; and it 
was accordingly read the third time, and passed. 



FIFTY-FIFTH CONGRESS. 519 

[Senate, second session, April 19, 1898, Cong. Record, vol. 31, part 5, p. 4070.] 
HOUSE BILLS REFERRED. 

vr * -A- •H- -X- * * 

The bill (H. R. 72) * * * was read twice by its title and referred 
to the Committee on Patents. 

S. 671. — A bill appointing commissioners to revise the statutes relating to patents, 
trade and other marks. Introduced by Hon. Orville H. Piatt, of 
Connecticut, March 18, 1897. Eeferred to the Committee on Patents. 
Indefinitely postponed. 

[Senate, first session, March 18, 1897, Cong. Record, vol. 30, part 1, p. 49.] 
BILLS INTRODUCED. 



Mr. Piatt, of Connecticut, introduced the following bills; which were 
severally read twice by their titles and referred to the Committee on 
Patents: 

A bill (S. 671) appointing commissioners to revise the statutes relat- 
ing to patents, trade and other marks. * * * 



[Senate, second session, May 18, 1898, Cong. Record, vol. 31, part 5, p. 4992,] 
REPORTS OF C03iMITTEES. 

* * ^ * -H- * * 

Mr. Piatt, of Connecticut, from the Committee on Patents, * * * 
to whom was referred the bill (S. 671) appointing commissioners to 
revise the statutes relating to patents, trade and other marks, reported 
adversely thereon; and the bill was postponed indefinitely. 



H. R. 2807. — A bill to protect labor unions and others in the use of trade marks, 
labels, and forms of advertisement. Introduced by Hon. Sydney E. 
Mudd, of Maryland, April 14, 1897. Referred to the Committee on 
Patents. Not reported. 

[House of Representatives, first session, April 14, 1897, Cong. Record, vol. 30, part 1, p. 721.] 

PUBLIC BILLS, RESOLUTIONS, AND MEMORIALS INTRODUCED. 
* ****** 

By Mr. Mudd: A bill (H. R. 2807) to protect labor unions and 
others in the use of trademarks, labels, and forms of advertisement — 
to the Committee on Patents. 

H. R. 3128. — A bill to authorize the registration of trade marks, and to protect the 
same. Introduced by Hon. Josiah D. Hicks, of Pennsylvania, May 6, 
1897. Referred to the Committee on Patents. Not reported. 

[House of Representatives, first session, May 6, 1897, Cong. Record, vol. 30, part 1, p. 941.] 

PUBLIC BILLS, RESOLUTIONS, AND MEMORIALS INTRODUCED. 



By Mr. Hicks: A bill (H. R. 3128) to authorize the registration of 
trademarks, and to protect the same — to the Committee on Patents. 

H. R. 4584. — A bill to create State trademarks and to protect foreign and interstate 
commerce. Introduced bv Hon. Edward Sauerhering, of Wisconsin, 
December 10, 1897. Withdrawn. 

S. Doc. 20 3i* 



520 EEVisioisr of statutes eelating to patents, etc. 

[House of Representatives, second session, December 10, 1897, Cong. Record, vol. 31, part 1, p. 103.] 

PUBLIC BILLS, RESOLUTIONS, AND MEMORIALS INTRODUCED. 

* * Tfr * ^f- * * 

By Mr. Sauerhering: A bill (H. R. 4581) to create State trade marks 
and to protect foreign and interstate commerce — to the Committee on 
Patents. 

[House of Representatives, second session. Marcli 10, 1898, Cong. Record, vol. 31, part 3, p. 2716.] 

REPORTS OF committees. 

* * * * -x- * * 

Mr. Hicks, from the Committee on Patents, * * * to which 
was referred the bill of the House (H. R. 4584:) to create State trade 
marks and to protect foreign and interstate commerce, reported the 
same with amendment, accompanied b}^ a report (No. 692); which said 
bill and report were referred to the House Calendar. 



[House of Representatives, second session, March 22, 1898, Cong. Record, vol. 31, part 4, p. 3098.] 

state trademarks. 

Mr. Sauerhering. Mr. Speaker, I ask unanimous consent for the 
present consideration of the bill (H. R. i584) to create State trade 
marks and to protect foreign and interstate commerce. 

The bill was read as follows : 

Be it enacted, etc. , Tliat in order to prevent tlie false branding or otlier marlsing of 
goods, wares, or mercliandise, tlie product of any State or Territory of tlie United 
States or of the District of Columbia, which are or are intended to become articles 
of foreign or interstate commerce or commerce with the Indian tribes, the governor 
of any such State or Territory and the Commissioners of the District of Columbia are 
hereby authorized and empowered to adopt a public trade-mark each for his or their 
respective State, Territory, or the District aforesaid, and file a description and illus- 
tration of the same in the Patent Office of the United States; but no such trade-mark 
or label shall be entitled to such registration which consists of or simulates the arms, 
seals, or other insignia of the United States, or of any State or municipality, or of 
any foreign nation, or which is offensive to public sentiment or morals. 

Sec. 2. That upon the receipt of any description and illustration of a trade-mark 
as provided in the preceding section, and upon payment of a fee of $25, the Com- 
missioner of Patents shall register the same, and a certificate of such registration, 
fully describing such trade-mark, shall be issued in the name of the United States of 
America, under the seal of the Department of the Interior, and signed by the Com- 
missioner of Patents, and a full record thereof be made and kept in books for that 
purpose. Copies of any such trade-marks, and of the descriptions accompanying 
the same, and of the certificate of registry, when duly authenticated by the Com- 
missioner or Assistant Commissioner of Patents, shall be received in evidence in all 
courts and by all officers of the United States, and shall be conclusive proof of the 
adoption and registration of such trade-marks. 

Sec. 3. That every such trade-mark shall be used only under and m accordance 
with such rules, regulations, and restrictions as may be provided by or according to 
the laws of the State, Territory, or District adopting and filing the same, and upon 
goods, wares, and merchandise produced, grown, or manufactured therein, and upon 
packages and wrappers containing the same. 

Sec. 4. That every person who, contrary to the provisions of this act or to the 
laws, rules, regulations, and restrictions of any State or Territory or the District 
aforesaid, affixes the registered trade-mark of such State, Territory, or District, or 
causes or procures the same to be affixed, or any colorable imitation thereof, calculated 
to deceive the public, to any goods, wares, or merchandise which are or are intended 
for sale, shipment, consumption, or use without and beyond the boundaries of such 
State, Territory, or District, or to any package or wrapper containing the same, shall 
be liable to an action on the case for damages for the wrongful use of said trade-mark 



FIFTY-FIFTH CONGRESS. 521 

at the suit of the owner thereof; and the party aggrieved shall also have his remedy 
according to the course of equity to enjoin the wrongful use of such trade-mark used 
in commerce with foreign nations, or among the several States, or with the Indian 
tribes, as aforesaid, and to recover compensation therefor in any court having juris- 
diction over the person guiltj' of such wrongful act; and courts of the United States 
shall have original and appellate jurisdiction in such cases without regard to the 
amount in controversy. 

Sec. 5. That every person who shall knowingly deal in, or sell, or keep, or offer for 
sale, or cause or procure the sale of, any goods, wares, or merchandise, in order that 
the same may become, or after they have become, subjects of foreign or interstate 
commerce, to which, or to the package or wrapper containing the same, there is 
fraudulently affixed any public trade-mark, as provided in this act, or any colorable 
imitation thereof calculated to- deceive the public, shall be deemed guilty of a mis- 
demeanor, and on conviction thereof shall be punished as provided in section 4 of 
this act. 

Sec. 6. That every person who fraudulently fills, or causes or j^rocures to be fraud- 
ulently filled, any package, or fraudulently uses, or causes or procures to be used, 
any wrapper to which is affixed any public trade-mark registered pursuant to the 
provisions of this act, or any colorable imitation thereof calculatect to deceive the 
public, with any goods, wares, or merchandise, with intent to deceive or mislead 
any purchaser or user of the same as to their true character, origin, or source, shall, 
if said goods, wares, or merchandise have become or are intended to become subjects 
of foreign or interstate commerce or commerce with the Indian tribes, be deemed 
guilty of a misdemeanor, and on conviction thereof shall be punished as pro^^ded in 
section 4 of this act. 

Sec 7. That if any person shall brand, mark, stamp, stencil, label, name, or describe 
any goods, wares, or merchandise, or any package or wrapper containing the same, 
which have or may become subjects of foreign or interstate commerce, in such man- 
ner as may be calculated to deceive or mislead any purchaser or user of the same as 
to the true character of such goods, wares, or merchandise, or as to the place where 
they were grown, produced, or manufactured, or shall cause or procure the same to 
be done by others; or if any person for himself, or as the agent or factor for another, 
or as a member of any copartnership, or as a manager, superintendent, agent, or rep- 
resentative of any corporation, shall have in his possession or under his control any 
goods, wares, or merchandise which he knows or has good reason to believe bear any 
public trade-mark, or any brand, mark, stamp, stencil, label, name, or description, 
in contravention of the provisions of this act, he is guilty of a misdemeanor, and upon 
conviction thereof shall be pmiishecl as provided in section 4 of this act. 

Mr, Bennett. Mr. Speaker, reserving- the right to object 

Mr. Hopkins. Mr. Speaker, I object. This is too important a bill 
to be considered in this way. 

^ ****** 

[House of Representatives, second session, April 18, 1898, Cong. Record, vol 31. part 5, p. 4058.] 

STATE trade:viarks. etc. 

Mr. Hicks, Mr. Speaker, I now ask for tJie consideration of the bill 
(H. R. 458-1:) to create State trademarks and to protect foreign and 
interstate commerce. 

The bill was read, as above: 



The Committee on Patents recommended the following amendments: 

The Committee on Patents, to whom was referred the bill (H. R. 4584) entitled 
''A bill to create State trade-marks and to protect foreign and intestate commerce," 
beg leave to submit the following report, with several amendments, and recommend 
that said bill do pass. 

In line 12, page 3, section 4, strike out the words " owner thereof" and insert the 
words "State, Territory, or District adopting the same."" 

In line 13, page 3, section 4, strike out the word "his" and insert the letter "a" 
therefor. 

In lines 16 and 17, page 3, section 4, strike out the words "and to recover com- 
pensation therefor. ' ' 



522 EEVISIOTT OF STATUTES RELATIIN^G TO PATENTS, ETC. 

In line 10, page 4, section 5, strike out the words "section four of." 
In line 13, page 4, section 6, strike out the words " section four of." 
In lines 18 and 19, page 5, section 7, strike out the words "as provided in section 
four of this act," and insert the w^ords "by a fine not to exceed the sum of 81,000, or 
imprisonment not to exceed one year, or iDy both such fine and imprisonment, in the 
discretion of the court." 

Mr. Hicks. Mr. Speaker, I move to amend this bill by striking out 
all of section 7 as it now exists and substituting- therefor a penalty 
clause, which shall read as follows 

Mr. RoBBixs. Mr. Speaker, I should like to have order. This seems 
to be a very important bill, changing the whole trademark laws of the 
country. 

Mr. Hicks. Oh. no. 

Mr. RoBBixs. We want to hear something about it. It seems to be 
a very radical measure. 

]\Ir. Hicks. ]My motion i.s that all of section T as read be stricken 
out. and that a penalty clause be inserted, to read as follows: 

In all convictions under this act the person or persons so convicted shall be deemed 
guilty of a misdemeanor, and shall be punished by a fine not to exceed 81,000, or 
imprisonment not to exceed one year, or either or both such fine and imprisonment, 
at the discretion of the court. 

I now move the passage of the bill with the amendment. 

Mr. DocKERY. Has there been any general debate? 

The Speaker. The Chair desires to suggest to the gentleman from 
Pennsylvania that the section which he moves to strike out has several 
amendments pending upon it. Action must first be taken upon the 
amendments. 

Mr. HiCKS. Of course we want to get it in the proper parliamentary 
form. 

The Speaker. The question is first on the amendments before the 
motion to strike out is put. 

Mr. DocKERT. Mr. Speaker 

Mr. Hicks. I want, of course, to get the bill in proper parliamentary 
form. 

Mr. DocKERT. This bill seems to be a very important measure. 

Mr. Hicks. It is, and concerns important interests that include all 
the food producers of the country. 

Mr. DocKERY. Changing the law in respect to trademarks. I am 
not familiar with this question, but it does occur to me that the bill can 
very properly go over until the House is in proper condition for its 
consideration. Under existing surroundings a bill of this importance, 
TN'ith a large number of sections, should be considered by the House. 
The committee is proposing to strike out one section, so that it is appar- 
ent that the committee itself has foimd some objection to its own meas- 
ure. I do not know anything about the bill, but a gentleman on my 
right states that it changes the law relating to trademarks so that States 
may establish trademarks; and objection is also made hy one or two 
gentlemen that jurisdiction is given to the United States cotirts with- 
out reference to the amount involved. It is obvious, Mr. Speaker, 
that it is an important measure, and I do not think it should be pressed 
for action until the House is in proper condition to consider it. 

Mr. Hicks. I will state, in reply to my friend, that this bill is pressed 
b}^ the food-producing interests of the countr}^. The}^ have appeared 
before the committee and urged the enactment of a measure such as 
this. The clause that we agree to strike out, section 7, is stricken out 



FIFTY-FIFTH COI^GRESS. 523 

at the request of the wine and liquor producers of this country, they 
claiming that it interferes especiallj" with their interests, and we agreed, 
rather than have any serious opposition here upon the floor and inter- 
fere with interests that we have no desire nor intention to antagonize, 
that we will not insist upon the enactment of section T, but insert a 
penalty clause instead thereof. I 3deld five minutes to the gentleman 
from New York [Mr. Chickering]. 

Mr. CniCKEPaNG. I thank the gentleman, but do not desire to take 
up the time of the House. 'The measure meets the requirements of the 
interests of m}' people fulh^ 

Mr. Hicks. The gentleman from New York [Mr. Chickering] repre- 
sents the dairy interests of New York State. The assistant secretary 
of agriculture of that State, the superintendent of the dair}^ and food 
commission of New York, and the representatives of the American 
Produce Exchange of the city of New York and also of the State of New 
York, all appeared before the committee and urged the enactment of 
this measure. I believe that this amendment which has been suggested 
to the measure will not antagonize the food-producing interests and 
will in no way interfere with the real object of the measure. There 
should be no serious objection to the enactment of the bill into law. 

Mr. Baetlett. How does it change the law? 

Mr. H/CKS. It does not change the present law. 

Mr. De Vkies. With that section out there will be nothing that will 
interfere with the wine and liquor interests of the country ? 

Mr. Hicks. Nothing. 

Mr. De Vkies. And the practice of branding for Sauterne, Bur- 
gundy, etc., will not be prohibited by an}^ provision of this bill? 

Mr. BQ[CKS, No, sir. The gentleman from New York [Mr. Fischer] 
has examined the measure and agrees to it. He thinks with this section 
7 stricken out there can be no objection to the bill. He can speak for 
himself. 

Mr. Fischer. I want to ask the gentleman from Pennsylvania a 
question. The question has been asked by friends about me. It relates 
to section 5. As I understand that section, it simply intends to pro- 
hibit the refilling of bottles and casks that are already marked and 
labeling them with other brands. 

Mr. Hicks. The gentleman correctlv interprets that paragraph of 
the bill. 

Mr. Fischer. And section T, to which I called 3^our attention, is 
obnoxious to the wine and liquor interests ? 

Mr. Hicks. Yes, sir; that is 3^our claim. 

Mr. Fischer. And your committee has stricken it out, merely 
inserting a penalt}^ in its place ? 

Mr. Hicks. Yes; I do this to prevent antagonism to the part of the 
bill I am specially desirous of caring for, as already stated hj me. 

Mr. De Vries. Section 6 also applies onh^ to refilling. Is that not 
true ? 

Mr. Hicks. Yes, sir; that is correct. 

The Speaker. The question is on the committee amendments to the 
section that is proposed to be stricken out. 

Mr. Bartholdt. Mr. Speaker, will it be in order to move to recom- 
mit the bill to the committee? 

The Speaker. It will be in order to recommit. 

Mr. Bartholdt. I make such a motion. 



524 REVISION OF STATUTES RELATING TO PATENTS, ETC. 

The Speaker. The gentleman from Missouri moves to recommit the 
bill to the committee. 

Mr. DoCKERY. Pending that motion, I suggest to the gentleman 
from Pennsylvania that some accommodation of differences be made, 
so that the bill may be withdrawn. It does not seem to me that this 
is an opportune time to consider the bill. 

Mr. Hicks. I will withdraw the bill on the request of my friend from 
Missouri, and in view of the disposition of the House not to consider 
the bill at this time. 

Mr. Bartholdt. I consent to its being withdrawn, Mr. Speaker. 

The Speaker. The bill is considered as withdrawn. 

Mr. Hicks. I would like for it, however, Mr. Speaker, to retain its 
place and for the Committee on Patents to retain its place on the call 
of committees. 

The Speaker. If there is no objection, the gentleman can call it up 
at some other time and his committee retain its place. 

There was no objection. 

Mr. RiDGELY. I would like to say a word upon this bill itself, Mr. 
Speaker, 

Mr. Arnold. It is withdrawn. 

Mr. RiDGELY. To the committee, not to the House. 



H. R. 8582. — A bill to amend the act of Congress relating to patents, trade marks, and 
copyrights. Introduced by Hon. Charles G. Bennett, of New York, 
February 24, 1898. Referred to the Committee on Patents. Not 
reported. 

[House of Representatives, second session, February 24, 1898, Cong. Record, vol. 31, part 3, p. 2154.] 

PUBLIC BILLS, RESOLUTIONS, AND MEMORIALS INTRODUCED. 

* * * * * v:- -x- 

By Mr. Bennett: A bill (H. R. 8582) to amend the act of Congress 
relating to patents, trademarks, and copyrights — to the Committee on 
Patents. 



H. K. 8620. — A bill to amend the act of Congress relating to patents, trade marks, and 
copyrights. Introduced by Hon. John Murray Mitchell, of New 
York, February 24, 1898. "^Referred to the Committee on Patents. 
Reported and referred to the House Calendar. 

[House of Representatives, second session, February 24, 1S98, Cong. Record, vol. 31, part 3, p. 2154.] 
PUBLIC BILLS, RESOLUTIONS, AND MEMORIALS INTRODUCED. 

* vt- * •X- * * * 

By Mr. Mitchell: A bill (H. R. 8620) to amend the act of Congress 
relating to patents, trademarks, and copyrights — to the Committee on 
Patents. 

[House of Representatives, second session, March 10, 1898, Cong. Record, vol. 31, part 3, p. 2716.] 
REPORTS OF COMMITTEES. 

.^ ^ ' ^ - 4^ * vc 

Mr. Hicks, from the Committee on Patents, to which was referred 
the bill of the House (H. R. 8620) to amend the act of Congress relat- 



FIFTY-FIFTH CONGRESS. 525 

ing to patents, trademarks, and copyrights, reported the same with 
amendment, accompanied by a report (No. 691); which said bill and 
report were referred to the House Calendar. 



S. 3956. — A bill to amend the act of Congress relating; to patents, trade marks, and 
copyrights. Introduced by Hon. Orville H. Piatt, of Connecticut, 
February 25, 1898. Referred to the- Committee on Patents. Not 
reported. 

[Senate, second session, February 25, 1898, Cong. Record, vol. 31, part 3, p. 2159.] 

BILLS INTRODUCED. 

* -X- * w %r * * 

Mr. Piatt, of Connecticut, (by request) introduced a bill (S. 3956) 
to amend the act of Congress relating to patents, trademarks, and 
copyrights: which was read twice by its title and referred to the 
Committee on Patents. 

S. 4256. — A bill to establish a high court of patents, trade marks, and copyrights. 
Introduced by Hon. Henry C. Hansbrough, of North Dakota, March 
28, 1898. Keferred to the Committee on the Judiciary. Not reported. 

[Senate, second session, March 28, 1898, Cong. Record, vol. 31, part 4, p. 3277.] 

BILLS INTRODUCED. 

* -A. -jr * * -H- -K- 

Mr. Hansbrough introduced a bill (S. 4256) to establish a high court 
of patents, trademarks, and cop^^rights; which was read twice b}^ its 
title and referred to the Committee on the Judiciary. 



S. 4794. — A bill to authorize the registration of trademarks and to protect the same. 
Introduced by Hon. Orville H. Piatt, of Connecticut, June 20, 1898. 
Keferred to the Committee on Patents. Not reported. 

[Senate, second session, June 20, 1898, Cong. Record, vol. 31, part 7. p. 6140.] 

BILLS INTRODUCED. 

* * ^- -X- -X- * -St 

Mr. Piatt of Connecticut (b}^ request) introduced a bill (S. ^794) 
to authorize the registration of trademarks and to protect the same, 
which was read twice by its title and referred to the Committee on 
Patents. 



H. R. 9815. — A bill appointing commissioners to revise the statutes relating to pat- 
ents, trade and other marks, and trade and commercial names. 
Introduced by Hon. Josiah D. Hicks, of Pennsylvania, April 12, 1898. 
Passed in House and Senate. Approved bv the President June 4, 
1898. (33 U. S, Stat. L., p. 431, chap. 379.)^ 

[Honse of Representatives, second session, April 12, 1898, Cong. Recora, vol. 31, part 4, p. 3769.] 

PLTBLIC BILLS, RESOLUTIONS, AND MEMORIALS INTRODUCED. 

* %r * -X- -A- * * 

By Mr. Hicks: A bill (H. R. 9815) appointing commissioners to 
revise the statutes relating to patents, trade and other marks, and 
trade and commercial names — to the Committee on Patents. 



526 EE VISION OF STATUTES EELATINa TO PATENTS, ETC. 

[House of Representatives, second session, May 3, 1898, Cong. Record, vol. 31, part 5, p, 4557.] 
REPORTS OF COMMITTEES. 

* * * '^Y^ Hicks, from the Committee on Patents, to which was 
referred the bill of the House (H. R. 9815) appointing commissioners 
to revise the statutes relating to patents, trade and other marks, and 
trade and commercial names, reported the same without amendment, 
accompanied hj a report (No. 1256); which said bill and report were 
referred to the Committee of the Whole House on the state of the 
Union. 



[House of Representatives, second session, May 10, 1898, Cong. Record, vol. 31, part 5, p. 4776.] 
REVISION OF PATENT LAWS, ETC. 

Mr. Hicks. I ask unanimous consent for the immediate considera- 
tion of the bill (H. R. 9815) appointing commissioners to revise the 
statutes relating to patents, trade and other marks, and trade and 
commercial names. 

The bill was read, as follows: 

Be it enacted, etc. , That the President, with the advice and consent of the Senate, 
shall appoint three commissioners, whose duty it shall be to revise and amend the 
laws of the United States concerning patents, trade and other marks, and trade or 
commercial names, which shall be in force at the time such commission shall make 
its final report, so far as the same relates to matters contained in or affected by the 
convention for the protection of industrial property concluded at Paris IVIarch 20, 
1883, the agreements under said convention concluded at IMadrid April 14, 1891, and 
the protocols adopted by the conference held under such convention at Brussels, 
1897, and the treaties of the United States, and the Laws of other nations relating to 
patents, trade and other marks, and trade or commercial names. 

That they shall report to Congress as soon as possible. 

That the report shall be so made as to indicate auy proposed change in the sub- 
stance of existing law, and shall be accompanied by notes w^hich shall briefly and 
clearly state the reasons for smj proposed change. It shall also be accompanied by 
references to such treaties and foreign laws relating to patents, trade and other marks, 
and trade or commercial names, as, in the opinion of the commissioners, may affect 
the citizens of the United States. 

That the sum of $250, or so much thereof as may be necessary, be appropriated to 
pay the necessary expenses of the commissioners in making their report, which sum 
shall be immediately available. 

The Speaker. Is there objection to the present consideration of this 
bill? 

Mr. DiNGLEY. Is the expense of this commission not to exceed the 
sum of ^250? 

Mr. Hicks. Yes, sir. 

Mr. DiNGLEY. Can the work be done for that amount? 

Mr. Hicks. The expense is not to exceed the sum named in the bill. 

Mr. DiNGLEY. Can commissioners do this work for that amount? 

Mr. Hicks. Yes, sir. Our commissioners abroad have served with- 
out compensation, and I have agreed with the gentleman from Mis- 
souri [Mr. Dockery] that I will move an amendment to this bill to 
insert after the word "commissioners," in line 4, page 1, the words 
'Ho serve without compensation." If the House will agree to con- 
sider the bill, I will move that amendment. 

There being no objection, the House proceeded to consider the bill. 

Mr. Hicks. I now move to amend by inserting after the word 
"commissioners," in line 4, page 1, the words "to serve without com- 
pensation." 

The amendment was agreed to. 



« FIFTY-FIFTH CONaEESS. 527 

Mr. LiYiNGSTON. I believe the gentleman from Pennsylvania [Mr. 
Hicks] did not answer the question of the gentleman from Maine 
[Mr. Dingle}^], which was whether all expenses would be covered by 
^250. Is the gentleman willing to offer an amendment to add the 
words "and no more?" 

Mr. Hicks. The expenses are to be covered entirely by the sum of 
$250, which is for typewriting and other writing that is to be done in 
connection with the work of this commission. The commission is to 
report to Congress a revision of the laws on this subject, so as to make 
our patent and trademark laws correspond with our treaties with for- 
eign nations. That is the purpose of the commission. 

Mr. Livingston. Why not add at the close of the bill, after the words 
"which sum shall be immediately available," the words "and in full 
for all expenses?" 

Mr. Hicks. 1 am willing that the gentleman from Georgia should 
offer that amendment. I will assent to it. 

Mr. Livingston. I offer that amendment, to come in at the close of 
the last paragraph. 

Mr. Steele. As I understand, these commissioners do their work 
for nothing, and it certainly would be unjust to ask that they pay their 
own expenses for typewriting, etc. If this appropriation is not 
enough, why not give more? 

Mr. Hicks. It is all that the commissioners ask and all that the gen- 
tlemen who are back of this movement desire. 

Mr. Livingston. I withdraw the amendment. 

Mr. DocKERY. Mr. Speaker, I desire to avail myself of this oppor- 
tunity to submit one single observation, by way of vindication of my 
own judgment, in reference to the question of revising our statutes. 

I offered a bill in the last Congress providing for a general revision 
of the statutes of the United States. It will be remembered that there 
has been no general revision since the revision under the act of 1873 
as amended, whereas the usual practice in the States of the Union is to 
revise their statutes every ten years. Believing that the United States 
statutes should have an immediate revision, I introduced the bill, 
which was favorabh^ reported, but for reasons the Speaker is entirely 
familiar with that bill did not pass. 

Subsequently an amendment was offered to the sundry civil bill in 
the Senate creating a commission to codify and revise the criminal and 
penal laws of the United States. That commission is now in full blast, 
and, with a corps of clerks, I suppose is busil}^ engaged in the work 
of accomplishing this revision. 

Now comes another commission — and I agreed not to object to the, 
consideration of this bill — to revise the patent laws of the United 
States. 

I hope at some time, along the lines of these various revisions, we 
shall have one commission to revise all of the laws of the United States. 
In my judgment it is an important work, and one that should be 
accomplished without delay. 

Mr Hicks. Mr. Speaker, in order that there may be no misunder- 
standing in reference to the pending bill, this relates, I will state to 
the House, to a revision of the laws covering patents and trademark 
regulations which come within the scope of our agreement with foreign 
nations. 

I ask a vote upon the bill. 



528 REVISION OF STATUTES RELATING TO PATENTS, ETC 



^ The bill as. amended was ordered to be engrossed and read a third 
time; and it was accordingly read the third time, and passed. 

On motion of Mr. Hicks, a motion to reconsider the last vote was 
laid on the table. 



rSenate, second session, May 11, 1898, Cong. Record, vol. 31, part 5, p. 4780.] 
HOUSE BILLS REFERRED. 

The bill (H. R. 9815) appointing commissioners to revise the statutes 
relating to patents, trademarks, and trade and commercial names was 
read twice by its title, and referred to the Committee on Patents. 



[Senate, second session. May 18, 1898, Cong. Record, vol. 31, part 5, p. 4992.] 
REPORTS OF C03IMITTEES. 



Mr. Piatt, of Connecticut, from the Committee on Patents, to whom 
was referred the bill (H. P. 9815) appointing commissioners to revise 
the statutes relating to patents, trade and other marks, and trade and 
commercial names, reported it without amendment, and submitted a 
report thereon. 



[Senate, second session, May 25, 1898, Cong. Record, vol. 31, part 6, p. 5188.] 
PATENTS AND TRADEMARKS. 

Mr. Platt, of Connecticut. I ask unanimous consent to call up the 
bill (H. P. 9815) appointing commissioners to revise the statutes relat- 
ing to patents, trade and other marks, and trade and commercial 
names. 

There being no objection, the Senate, as in Committee of the Whole, 
proceeded to consider the bill. It provides that the President, with 
the advice and consent of the Senate, shall appoint three commission- 
ers, to serve without compensation, whose duty it shall be to revise 
and amend the laws of the United States conce'i-ning patents, trade and 
other marks, and trade or commercial names, which shall be in force 
at the time such commission shall make its final report, so far as the 
same relates to matters contained in or afi'ected by the convention for 
the protection of industrial property concluded at Paris March 20, 
1883, the agreements under the convention concluded at 31adrid April 
14, 1891, and the protocols adopted by the conference held under such 
convention at Brussels, 1897, and the treaties of the United States, 
and the laws of other nations relating to patents, trade and other 
marks, and trade or commercial names. 

The bill was reported to the Senate without amendment, ordered to 
a third reading, read the third time, and passed. 



FIFTY-FIFTH CONGRESS. 529 

[Senate, second session, May 27, 1898, Cong. Record, vol. 31, part 6, p. 5292.] 
ENKOLLED BILLS SIGNED. 

A message from the House of Representatives, by Mr. W. J. Brown- 
ing, its chief clerk, announced that the Speaker of the House had 
signed the following enrolled bills, * * * and they were there- 
upon signed by the Vice-President. 

■X- * * * -X- * * 

A bill (H. R. 9815) appointing commissioners to revise the statutes 
relating to patents, trade and other marks, and trade and commercial 
names. 



,^ [House of Representatives, second session. May 27, 1898, Cong. Record, vol. 31, part 6, p. 5804.] 
ENROLLED BILLS SIGNED. 

Mr. Hagar, from the Committee on Enrolled Bills, reported that 
they had examined and found truly enrolled bills of the following 
titles, when the Speaker signed the same: 

■X- * * w ■x- * * 

H. R. 9815. An act appointing commissioners to revise the statutes 
relating to patents, trade and other marks, and trade and commercial 
names. 



[House of Representatives, second session, June 6, 1898, Cong. Record, vol. 31, part 6, p. 5566.] 
MESSAGE FROM THE PRESIDENT. 

A message from the President of the United States, by Mr. Pruden, 
one of his secretaries, informed the House of Representatives that the 
President had approved and signed bills of the following titles: 

On June 4, 1898. * * / , 

H. R. 9815. An act appointing commissioners to revise the statutes 
relating to patents, trade and other marks and trade and commercial 
names. 

This is the statute under which your commission is now acting, and 
is to be found on page 145 of this report. 



I]^DEX. 



Act ( see Bills, Statutes) , 

for appointment of Commission, 145. 

debate in Congress preceding passage of, 525-529. 
trademark act of 1870, 100, 102, 103, 398. 

debate in Congress preceding passage of, 391-398. 
trademark act of 1876, 101, 412. 

debate in Congress preceding passage of, 401-412. 
trademark act of 1881, 104, 114, 491. 

debate in Congress preceding passage of, 417-491. 
trademark act of 1882, 104, 499. 

debate in Congress preceding passage of, 497-499. 
Administratok. (See Executor.) 
Ac4ENT. (See Representative.) 

Agreements (see International Convention, Treaties) — 
of Madrid, April 14, 1891, 45, 158, 160. 
concerning false indications of origin, 46, 158. 
concerning international registration of trademarks, 47, 160. 
amendment of, 185, 
report on, 166. 
rules, 163. 
AxDRASSY, Count, statement of, at A'ienna, 1873, 7. 
Appeal, 

trademarks — 

to Commissioner, 71, 84, 133. 
Court of Appeals, 71, 84, 133. 
Supreme Court, 72. 
Application, 
patents — 

effect of prior foreign, 24, 25. 
preliminary examination of, 28. 
priority under Convention, 12, 23. 
trademarks — 

preliminary examination of 69, 83, 131. 
priority under Convention, 42, 68, 83, 130. 
Archer, Stephenson, 400. ^ 

Arcientine Republic, 

at Conference of 1883, 10. 

conventions of Montevideo, 254, 255. 

inventions excluded from protection, 306. 

patent law, 292, 306. 

registration of trademarks required, 373. 

trademark law, 340, 373. 

treaties with other countries, 263. 
Armfield, R. a., 104, 422, 426, 488, 496. 

trademark bill introduced by, 426. 
Attorney-General, 

opinion of, as to effect of International Convention, 19, 265. 
Attributive trademark laws, 54, 55, 126, 363. 
Austria (see Austria- Hangarii), 
changes in patent laws of, 16. 
compulsory license, 318. 
examination system in, 29. 
inventions excluded from protection, 306. 

531 



532 INDEX. 2m.' 

AvsTRiA {see Austria-Hungary) , ^^ 

patent congress at Vienna, 7, 224. 
fees 34. 

law' 17,' 292, 294, 306, 313. 
registration of trademarks required, 373. 
requirements as to nonresident applicants, 294. 
second patent to true inventor, 313. 
trademark law, 340, 373. 
Austria-Hungary, 

at Conference of 1880, 8. 
1883, 10. 
Convention with Germany, 256. 

trademark treaties with United States, 40, 50, 58, 101, 325. 
other countries, 256, 261. 
Bahama Islands, 

compulsory license, 321. 
patent law, 292, 321. 
Banks, Nathaniel P., 99, 386. 
Bartholdt, Richard, 509, 510. 
Belgium, 

agreement for international registration, partv to, 47, 160. 
at Conference of 1880, 8. ^ 

1883, 10. 
International Convention, party to, 6, 40, 105, 146. 
present patent law, 17, 292. 
requires registration of trademarks, 373. 
trademark laws in, 96, 340, 373. 

treaties with United States, 48, 96, 97, 101, 105, 326. 
other countries, 261. 
Bennett, Charles G.,510. 
Bills (see ^d; Patents; Trademarks), 

relating to trademarks introduced into Congress — 
Thirty-sixth Congress, 

H.R.330; p. 380, 381. 
Thirty-seventh Congress, 

H. R. ; to punish frauds in trademarks, p. 382. 
Thirty-ninth Congress, 

H.R.; p. 382. 
Forty-first Congress, 

S. 264, to execute the provisions of a treatv with Russia concerning 

trademarks, p. 98, 382-385. 
S. 265, to prevent counterfeiting of foreign trademarks protected by 

treaty, p. 98, 382-385. 
S. 501, to provide for the execution of treaties concerning trademarks, 

386. 
H. R. 1824, to prevent the importation of foreign goods bearing domes- 
tic trademarks, p. 99, 386. 
S. 829, in relation to fraudulent trademarks upon foreign watches (Act 

of March 3, 1871), p. 99, 386-390. 
H. R. 1714, to revise, consolidate, and amend the statutes relating to 
patents, etc. (Act of July 8, 1870), p. 100, 391-398. 
Fortv-second Congress, 
H. R. 2597, p. 399. 
Forty-third Congress, 

H. R. 4065, p. 400. 

Fortv-fourth Congress, 

H. R. 2547, p. 400. 

S. 846, to punish the counterfeiting of trademark goods, etc., p. 101, 400- 
413. 
Forty-fifth Congress, 

H. R. 252-4^ p. 417. 
Forty-sixth Congress, 

H. R. 125, joint resolution to amend the Constitution in relation to 

trademarks, p. 417, 426, 428. 
H. R. 2573 (Armfield bill), p. 104, 426-428. 
H. R. 2981, p. 428. 

H. R. 5088, to authorize the registration of trademarks and to protect 
the same (Act of March 3, 1881), p. 104, 428-492. 



INDEX. 533 

Bills (see -4 d; Patents; Trademarks), 

Forty-sixth Congress — Continued. 

S. 1751, p. 492, 493. 

H. R. 6505, p. 493. 

H. Ees. Resolution requesting the Secretary of the Interior to inform 
the House under what authority trademarks are being registered, 
p. 493, 494. 
Forty-seventh Congress, 

S. 155, p. 494, 495. 

H. Res. 9. Joint resolution proposing an amendment to the Constitu- 
tion, p. 495. 

H. R. 1200, p. 496. 

S. Res., p. 496. 

H. R. 4557, p. 497. 

S. 1440, relating to registration of trademarks (Act of August 4, 1882), 
p. 104, 497-499. 

H. R. 5056, p. 499. 

H. R. 5057, p. 499. 

H. R. 6688, p. 499. 
Forty-eighth Congress, 

H. R. 4553, p. 499, 500. 

S. 2513, p. 500. 
Forty-ninth Congress, 

S. 1034, p. 500. 

S. 1209, p. 500, 501. 
Fiftieth Congress, 

H. R. 7732, p. 501. i 

Fiftv-first Congress, 

H. R. 160, p. 501. 

H. R. 260, p. 501, 502. 

H. R. 3812, p. 502, 503. 

H. R. 10972, p. 503. 
Fifty-second Congress, 

\S. 454, p. 503. 

S. 984, P..503, 504. 

H. R. 94, p. 504. 

H. R. 584, p. 504, 505. 

H. R. 5573, p. 505, 506. 

H. R. 5760, p. 506. 

H. R. 7216, p. 506. 

H. R. 9528, p. 506. 

S. 3478, p. 506, 507. 

S. Res. Concerning the enforcement of treaties relating to trademarks, 
p. 507. 
Fifty-third Congress, 

H. R. 1901, p. 507. 

H. R. 1902, p. 507, 508. 

H. R. 1984, p. 508. 

H. R. 3460, p. 508. 

H. R. 5862, p. 508. 

H. R. 5874, p. 508. 

H. R. 6441, p. 508, 509. 

S. 2015, p. 509. 

H. R. 7669, p. 509. 

H. R. 7835, p. 509. 

H. R. 8533, p. 509, 510. 
Fifty-fourth Congress, 

H. R. 1675, p. 510. 

H. R. 2304, p. 510. 

S. 1236, p. 510. 

S. 1627, p. 510, 511. 

H. R. 4349, to create State trademarks, etc., p. 511. 

H. R. 6402, p. 511. 

H. R. 6577, p. 511. 

H. R. 7477, p. 511, 513. 

H. R. 8892, p. 513, 514. 

S. 3698, p. 514. 



534 INDEX. 

Bills (see Act; Patents; Trademarks), , 

Fifty-fifth Congress, 
H. K. 33, p. 514. 

H. R. 72, trademarks on bottles, siphons, etc., p. 515, 519. 
S. 671, p. 519. 
H. R. 2807, to protect labor unions and others in the use of trademarks, 

etc., p. 519. 
H. R. 3128, p. 519. 
H. R. 4584, p. 519, 524. 
H. R. 8582, p. 524. 
H. R. 8620, p. 524. 
S. 3956, p. 525. 

S. 4256, to establish a high court of patents, trademarks, and copy- 
rights, p. 525. 
H. R. 9815, to appoint commissioners to revise the statutes relating to 

patents, trademarks, etc. (act of June 4, 1898), p. 145, 525-529. 
S. 4794, p. 529. 
Board of Trade (British), report of, 342. 
Bolivia, 

compulsory license, 319. 
patent law, 292, 319. 
trademark law, 340. 
Brazil, 

agreement concerning false indications of origin, party to, 158. 

for international registration, party to, 160. 
at conference of 1880, 8. 
1883, 10. 
International Convention, party to, 6, 40, 146. 
laws giving effect to International Convention, 269. 
patent laws, 17, 292. 

requirements as to nonresident applicants, 294. 
trademark law, 340, 373. 

treaty with United States, 52, 104, 328. 
other countries, 263. 
Briggs, James F., 417. 
British colonies (see name of colony), 
compulsory license, 321. 
patent laws, 28, 321. 
patent to true inventor, 314. 
require registration of trademarks, 375. 
British New Guinea, 

compulsory license, 321. 
patent law, 292, 321. 
British South Africa, 
patent law, 292. 
trademark law, 340. 

amendments to Convention adopted at, 12, 14, 24, 182, 185, 196, 197, 221. 

delegates from United States to, 11. 
report of, 192. 

from Germany, statement of, 209, 

from Great Britain, report of, 214. 

proposition of United States to, 189. 
British delegates, 208, 217. 
BucH, Jno. R., 499. 
Bulgaria, 

requirement for registration of trademarks, 374. 

trademark law, 340, 374. 
Bynum, William D., 501, 503, 504. 
Cameron, James Donald, 494. 
Canada, 

oath by applicant, 291. 

patent law, 291, 292, 295. 

, registration of trademarks required, 374. 

requirements as to nonresident applicants, 295. 

trademark law, 340, 374. 
Cape Colony, 

patent law, 292. 

trademark law, 340. 



INDEX. 535 

Cases cited, 

Addyston Pipe & Steel Co. v. U. S. (175 U. S., 211), 60, 118. 

Almy V. California (24 How., 169), 429. 

Amoskeag Mfg. Co. v. Spear (2 Sandf.,599), 91, 113. 

Blanchard v. Hill (2 Atk.,484), 91. 

Burnett iJ. Phalon (9 Bos., 192; 5 Abb. Pr. N. S., 212; 3 Keyes, 594; Cox. Am. 
T.M.Cas., 376), 112. 

Canal Co. v. Clark (25 Barb., 13 Wall., 311), 93, 112, 462. 

Chisholm i\ Georgia (2 Dallas, 419), 449. 

Clark V. Clark (25 Barb., 76), 93. 

Coffeen v. Brunton (4 McLean, 516), 440. 

Consolidated Fruit Jar Co. in re (14 O. G., 269), 462. 

Dixon Crucible Co. v. Guggenheim (2 Am. Law Times R. (S"!;. ), 288; 2 Brew- 
ster 321 ) 94. 

Eddle'ston v. vick (23 Eng. Law Eq. Rep., 51), 462. 

Foster t'. Neilson (2 Peters, 253), 438. 

Gibbons v. Ogden (9 Wheaton, 1), 470. 

Involving property right in trademark, 110. 

Kollock in re (165 U. S., 526) , 60. 

McCulloch V. Maryland (4 Wheat., 316), 454. 

Millington v. Fox (3 Myc. & Cr., 338), 91. 

New Orleans v. U. S. (10 Peters, 662), 454, 455, 456. 

Patapsco Guano Co. v. Board of Agriculture of N. C. (171 U. S., 345), 60. 

Paul V. Virginia (8 Wall., 168), 429, 436. 

Pensacola Tel. Co. v. Western Union Tel. Co. (96 U.S., 1), 429,437.' 

Phalon V. Wright (5 Phila., 464), 93. 

Pittsburg and Southern Coal Co. v. Louisiana (156 U. S., 590), 60. 

C. E. Richardson, in re (3 0. R., 120), 462. 

Schollenberger v. Pennsylvania (171 U. S., 1) , 60. 

Taylor v. Carpenter (3 Story, 458), 93, 440. 

Thomson v. Winchester (19 Pick., 214), 93. 

Trademark cases (100 U. S., 82) , in full, 413. 
Referred to, 59, 100, 422, 429, 435, 437. 

Tucker Mfg. Co. v. Boyington (cited as Locke Mfg. Co. v. Boyingto'n, 9 0. G., 
455) , 462. 

Turner v. Maryland (107 U. S., 38), 60. 

U. S. V. Coombs (12 Peters, 72), 430, 438, 455. 

U. S. V. Fisher (2 Cranch., 358), 454. 

U. S. V. Forty gallons of whiskey (93 U. S., 188), 438. 

U. S. V. Steffins. See trademark cases. 

Veazie v. Moor (14 How., 568), 470. 
Caswell, Lucien B., 428. 
Caveats, 6, 21, 27, 37. 
Central and South American Countries, 

trademark treaties of, 263, 264. 
Ceylon, 

compulsory license, 321. 

inventions shown at expositions, 270. 

patent law, 270, 292, 295, 314, 321. 

requirements as to nonresident applicants, 295. 

second patent to true inventor, 314. 

trademark law, 340. 
Chili, 

patent law, 292. 

requires registration of trademarks, 374. 

trademark law, 340. 
Cockrell, Frances M., 509. 
Collective trademark, 

legislation respecting in foreign countries, 349. 

States of United States, 351. 
Columbia, 

patent law, 292. 
Colonies, 

American — 

commercial conditions in, 90. 

laws requiring marking of goods, 59. 

British (see British Colonies). 

S. Doc. 20 35* 



536 INDEX. 

Commerce, 

importance of protection of trademarks to, 117, 118, 394, 404, 462, 478. 

in colonies, 90. 

necessity of registration of marks used in, 57, 111, 114. 

regulation of, through regulation of marks, 58. 

in proposed bill, 65. 
relation of trademark to, 103, 116, 124, 436. 
Commercial names, 44, 55, 150. 

Commissioners to revise statutes relating to patents, etc.. 
Act providing for appointment and duties, 145. 

debate in Congress preceding passage of, 525-529. 
legislation proposed by, 36, 65, 126. 

amending patent laws, 36. 
trademark laws, 65, 126. 
majority, 65. 
minority, 126. 
report on revision of patent law, 6. 

trademark laws, 40, 89. 
majority, 40. 
minority, 89. 
Common law, 

of the United States, 120. 

trademarks, 106, 107, 108, 111, 121, 392, 394, 397. 
basis of, 121. 

decisions from which determined, 107. 
development of. 111. 

remedies for infringement under, 109, 404. 
Compulsory license, 35, 318. " 
Confederation, articles of, 59. 
Conferences under international convention, 
correspondence relating to, 228. 
of Brussels, 11. 

amendments adopted at, 13, 15, 24, 182, 196, 221. 
delegates from United States to, 11. 

report of, 192. 
British report of, 214. 
Madrid, 11. 

amendments adopted at, 156, 245. 
delegates to, 11. 

report of, 245. 
propositions of U. S. to, 250. 
Paris, 10. 

delegates to, 10. 
report of, 235. 
Rome, 11. 

delegate to, 11. 
report of, 243. 
Congo Free State, 
patent law of, 292. 

requires registration of trademarks, 374. 
trademark law, 340, 374. 
Congress (see ylcts; Bills), 
debates in, see Acts, 

concerning trademarks, see Acts, Bills. 
legislation and proposed legislation of, concerning trademarks, 98, 99, 101, 104, 
380 529 
consti'tutionalitv of, 59, 103, 104, 115, 125, 394, 413, 422, 424, 428, 431, 435-441, 

450, 462, 467, 471, 486, 488. 
power of, to protect trademarks, 55, 58, 59, 60. 61, 92, 100, 103, 104, 115, 125, 394, 

413, 422, 424, 428-431, 434, 441, 450, 462, 467, 471, 486, 488. 
as giving effect to treaties, 97, 428, 431, 438, 441. 
opinion of Jefferson as to, 58, 92. 
report of Judiciarv Committee as to, 428-431. 
under commerce ' clause of Constitution, 59, 103, 115, 125, 413, 422, 424, 434, 

438, 441, 450, 460, 467, 471, 486, 488. 
under patent and copyright clause of Constitution, 59, 103, 394, 413, 460-462. 
Conk ling, Roscoe, 400. 



INDEX. 537 



CoNSTirmoNALiTY (see Congress) , 

of trademark legislation proposed by Commissioners, 59, 61, 124. 
CoxvENTiONS. {See International Convention; Treaties.) 
Corliss, John B., 512, 514. 
Cost of registratiox of trademarks (see Fees) , 

under agreement for international registration, 47, 168. 
Costs ix case of opposition to registration, 78. 
' ' Country of origin, ' ' 

defined, 42. 
Cox, Samuels., 493. 
Decisions. (See Cases Cited.) 
Declarations. (See Treaties.) 
Declaratory trademark laws. 
Definitions, 

in proposed trademark law, 78. 
Delay in Patent Office, 32. 
"Delay of priority." (See Priority, Period of.) 
Delegates to conferences, 10, 11. 

from Great Britain, report of, 214, 

United States, report of, 192, 235, 243, 245. 
Denmark, 

compulsory license, 319. 

International Convention, 

laws giving effect to, 17, 270. 
party to, 6, 40, 146. 

inventions excluded from protection, 307. 

patent law, 16, 17, 270, 292, 295, 307, 319. 

requirements as to nonresident applicants, 295. 

requires registration of trademarks, 374. 

trademark law, 54, 270, 295, 340, 374. 

treaty with United States, 40, 53, 105, 329. 
other countries, 262. 
Draper, William F., 511, 514. 
Eaton, William P., 492. 
Ecuador, 

compulsorv license, 320. 

patent law', 292, 320. 
European countries (see name of country): 

trademark treaties of, 254. 
EvARTS, William M., 

correspondence with Outry, 22, 235. 
Examination, 

of applications for patent, 28. 
Executor or administrator, foreign appointed, 20, 36. 
Exclusion from patent protection, 31, 306. 
Expositions, 

inventions shown at, 26, 150. 

trademarks at, 45, 150. 
False indications of origin, 44, 46, 197, 205, 252. 

agreement of Madrid as to, 45, 46, 158, 197, 219. 
amendment to, 219. 
countries which are parties to, 46, 158. 
Fees, 

patent, in United States and foreign countries, 34, 

proposition of United States as to, 32, 189, 192. 

trademark, in foreign countries, 56. 
United States, 56. 

reduction of, 64, 7", 136. 
Finland, 

compulsory license, 320. 

inventions excluded from protection, 307. 

patent law, 17, 292, 296, 307, 314, 320. 

requirements as to nonresident applicants, 296. 

second patent to true inventor, 314. 

trademark law, 296, 340. 
Fiji Islands, 

patent law, 292. 

trademark law, 340. 



538 INDEX. 

Fitch, Ashbel P., 506, 507, 508. 
Forbes, Francis, 

assisted at Patent Congress of Paris, 1878, 8. 
Commissioner to revise statutes, etc., 3, 61. 
delegate to Conference of Madrid, 1890, 11. 
report of, 245. 
Conference of Brussels, 1897, 11. 
report of, 192. 
Foreign applicant for patent, 25, 26. 

appointment of representative by, 31, 38, 56, 68, 129, 294. 
Foreign appointed executor or administrator, 20, 36. 
Foreign countries ( see name of countrv ) , 

patent laws of, 28, 35, 269, 292, 294, 306, 313, 318. 
trademark laws of, 54, 56, 269, 294, 340, 349, 373. 
treaties with IJnited States, 325. 
other countries, 261. 
Forfeiture of patents (see Independence of patents), 

by expiration of patents in other countries, 14, 182, 196, 221. 
importation of patented articles, 13, 149. 
Formalities. ( See JRequ irements for Registration. ) 
Forms for use in registration of trademarks, 
in International registration, 176, 181. 
proposed trademark bill, 67, 68, 69. 
France, 

International Convention, effect given to, 17, 272. 
importation of patented articles, 13. 
inventions excluded from protection, 307. 
party to agreements of Madrid, 46, 47, 158, 160. 
party to International Convention, 6, 40, 105, 146. 
Patent Congress at Paris, 1878, 8. 
. patent law, 12, 13, 17, 272, 307. 
requires registration of trademarks, 375. 

resolutions respecting trademark protection in United States, 41, 123, 141. 
trademark law, 54, 340, 349, 363, 375. 
text of, 363. 

treaty with United States, 43, 49, 101, 330, 384. 
other countries, 117, 262. 
French Indo-China, 
patent laws, 292. 
Garland, Augustus H., 946. 
Germany, 

at patent congress of 1878, 8. 
collective trademarks, 349. 
compulsory license, 320. 
convention with Austria-Hungary, 256. 
Italy, 258. 
Switzerland, 258. 
delegates to Brussels Conference, statement of, 209. 
inventions excluded from protection, 32, 308. 
merchandise marks law, 352. 
patent law, 17, 297, 320. 

proposed modification of International Convention, 206, 209, 215. 
requirements as to nonresident applicants, 297. 
requires registration of trademarks, 375. 
trademark law, 54, 297, 340, 349, 352. 
text of, 352. 
treaty with United States, 40, 51, 58, 331. 
other countries, 117, 262. 
Great Britain, 

at conference of 1880, 8. 

1883, 10. 
Board of Trade, report of, 342. 
colonies of, 28, 314, 321, 375. 
compulsory license, 35, 321. 

delegates of, to Brussels conference, proposition of, 202, 223. 
report of, 214. 



IIN^DEX. 539 

Geeat Britain, 

International Convention, effect given to, 17, 273. 
party to, 6, 40, 105, 146. 

patent fees in, 34. 

law, 18, 34, 35, 273, 292, 314. 
term of, 34. 

legislation respecting commerce in colonies, 90. 

report of delegates of, to Brussels conference, 214. 

requirements as to nonresident applicants, 56. 

second patent to true inventor, 314. 

trademark law, 43, 54, 57, 91, 107, 113, 273, 297, 350, 375. 
treaties with United States, 40, 51, 58, 103, 331. 
other countries, 117 262. 
Greece, 

requires registration of trademarks, 376. 

requirements as to nonresident applicants, 298. 

trademark law, 298, 340, 376. 
Greenleaf, Halbert S., 499. 
Greeley, Arthur P., 

comments on Vienna resolutions, 225. 

commissioner to revise statutes, etc., 3, 61, 126. 

dissenting report as to trademarks, 89. 

trademark bill proposed by, 126. 

translations by, 166, 176, 256, 258, 261, 352, 359, 363. 
Grosscup, Peter S., 

commissioner to re vies statutes, etc., 3, 61. 
Guatemala, 

patent law, 31, 292. 

trademark law, 340. 

treaties with other countries, 263. 
Hall, Osee M., 506,508,509. 
Hammond, N. J., 428,431-450,493. 
Hansbrough, Henry C, 525. 
Hawaii, 

patent law, 292. 

trademark law, 340. 
Hewitt, Abram N., 400, 407. 
Hicks, Josiah D., 519, 525. 
HiscocK, Frank, 503, 504. 

Historical consideration of trademarks, 58, 89. 
Holland. (See Netherlands.) 
Hong Kong, 

patent law, 28, 292. 

trademark law, 340. 
Hungary (see Austria-Hungary), 

compulsory license, 321. 

inventions excluded from protection, 308. 

patent law, 18, 292, 298, 308, 321. 

requires registration of trademarks, 373. 

requirements as to nonresident applicants, 298. 

trademark law, 340, 373. 
Importation, 

of articles manufactured abroad, 44, 65, 82. 

goods bearing false marks, 44, 46, 76, 86, 99, 141, 150, 158, 197, 252, 387, 389. 
patented articles, effect of, 13. 

under International Convention, 13, 149. 
Independence of patents, 14, 15, 183, 196, 221, 248. 
India, 

compulsory license, 321. 

international expositions, 274. 

patent law, 292. 

requirements as to nonresident applicants, 299. 

second patent to true inventor, 315. 
Industrial property, 

convention for the protection of (see International Convention ) . 

definition of, 19, 152. 



540 INDEX. 

International bueeau of union for protection of industrial property, 

appropriations for support of, 27. 

duties of, 151, 154. 

expenses of, 153, 157. 

report of, 166. 
International convention for the protection of industrial property, 

adherence of United States to, 11, 105, 146. 

adoption of, 10. 

advantages of, 11, 14. 

asfreements under (see Agreements of Madrid) . 

amendment of, 11, 13, 14, 15, 24, 45, 156, 182, 196, 244. 
proposed by United States, 189, 192, 247, 250. 

other countries, 195, 202, 204, 208, 218, 223. 

articles of, 

1. 19, 148. 

2. 12, 19, 41, 148, 153, 189, 192, 236, 241, 244. 

3. 12, 23, 42, 148, 196, 221, 237. 

4. 12, 23, 42, 55, 149, 190, 194, 196, 214, 221, 237. 

5. 13, 26, 149, 214, 237, 244. 

6. 10, 42, 149, 153, 202, 211, 214, 219, 238. 

7. 10, 43, 150, 238. 

8. 44, 150, 239. 

9. 44, 150, 197, 221, 239, 244. 

10. 44, 150, 197, 221, 239, 252. 

11. 26, 45, 150, 222, 238, 239. 

12. 27, 41, 150, 153, 239. 

13. 27, 151, 153, 239. 

14. 151, 197, 222, 240. 

15. 151, 240. 

16. 151, 197, 222, 240. 

17. 151, 240. 

18. 152, 240. 

19. 152, 240. 

causes leading to adoption of, 7. 

changes in patent laws since, 16, 269. 

conferences under 11, 45, 120. 

correspondence and reports relating to, 228. 

effect given to, in foreign countries, 18, 43, 269. 
United States, 19, 41, 265. 

final protocol, 10, 19, 42, 152, 217, 240. 

Germany, proposed amendment to, 207, 209, 215, 222. 

importance of, 6. 

importation of patented articles under, 13. 

goods bearing false trademarks, 44. 

independence of patents under, 14. 

legislation of foreign countries giving effect to, 269. 

required to give effect to in United States, 19, 27, 36, 41, 68, 83, 129. 

original draft of, 9. 

parties to, 6, 40, 105, 146. 

patent congresses preceding, 7, 8. 

priority under, 12, 36, 68, 83, 194, 199, 214. 

proclamation of, 153. 

progress in international agreement since, 15. 

purpose and meaning of, 7. 

ratification of, 146. 

registration of trademarks under, 201. 

text of, 146. 

working, modification of requirement as to, 15, 200. 
International expositions, 

laws of foreign countries respecting, 269. 

provisions of International Convention respecting, 26, 45, 150. 
International registration of trademarks, 

agreement of Madrid concerning (see Agreements of Madrid). 

forms used in, 176. 

report of International Bureau as to, 166. 

rules of, 163. 
International Union. {&iee International Convention.) 



INDEX. 541 

Interstate trademarks, 

power of Congress to regulate, 58, 59, 63, 92, 115, 124. 

provisions of proposed legislation relating to, 63, 66, 67, 79, 80, 126, 139, 426, 
435, 445, 467, 488. 

trademark act of 1881, 104, 426, 428, 432. 
Inventions (see Patent), 

excluded from patent protection, 31, 306. 

treaty obligation respecting the protection of, 6. 

working and compulsory license, 35, 318. 
Inventor, 

rights granted to, under International Convention, 12, 148. 

second patent to true, 33, 313. 
Italy, 

convention with Germany, 258. 

International Convention, laws giving effect to, 18, 275. 
party to, 6, 40, 105, 146. 

inventions excluded from protection, 308. 

patent law, 18, 275, 308. 

requires registration of trademarks, 376. 

trademark law, 340, 376. 

treaty with United States, 53, 105, 332. 
other countries, 258, 262. 
Jamaica, 

patent law, 292. 

T-equires registration of trademarks, 376. 

trademark law, 340, 376. 
Jagerschmidt, Ch., 

draft of convention submitted by, 8, 9. 
Japan, 

collective trademarks, 350. 

compulsory license, 322. 

International Convention, laws giving effect to, 18, 275. 
party to, 6, 40, 105, 146. 

inventions excluded from protection, 309. 

patent law, 18, 275, 299, 309, 315, 322. 

requirements as to nonresident applicants, 299. 

requires registration of trademarks, 376. 

second patent to true inventor, 315. 

trademark law, 275, 299, 340, 350, 376. 

treaties with United States, 54, 105, 332. 
other countries, 263. 
Jefferson, Thomas, 

report of, on power of Congress to regulate trademarks, 58, 92. 
Jenckes, Thomas a., 391. 
Lapham, Oscar, 505, 508. 
Laws. (See Patent Lav:s; Trademark Laws.) 
Leeward Islands, 

patent law^ 292. 

trademark law, 340. 
Legislation (see Acts, Patent Laws, Trademark Laws; Statutes), 

proposed by commissioners as to patents, 36 
as to trademarks, by majority, 65. 
minority, 126. 
License. ( See Compulsory License. ) 
Limitation, 

of second patent to true inventor, 33, 38, 313. 
Luxemburg, 

compulsory license, 322. 

inventions excluded from protection, 309. 

patent law, 18, 292, 300, 309, 322. 

requirements as to nonresident applicants, 300. 

requires registration of trademarks, 377. 

trademark law, 300, 340, 377. 
treaties, 262. 
McCoiD, Moses A., 417, 420, 451, 477, 495. 
McCooK, Anson G., 497. 



542 INDEX. 

Madrid, 

agreements of, 45, 158, 160. 

as to false indications of origin, 158, 220. 

international registration of trademarks, 160, 197. 

delegates to conference of, 11, 
report of, 245. 

supplemental convention of, 156. 
Malta, 

compulsory license, 323. 

laws respecting priority of invention, 276. 

patent law, 276, 292, 3,23. 
Marking, 

early laws as to, 59. 

penalties for false, 65, 76. 

requirements as to, 44, 65, 82, 99. 
Mashonaland (see British South Africa), 

patent law, 292. 
Matabeleland (see British South Africa), 

patent law, 292. 
Mauritius, 

patent law, 292. 

trademark law, 340. 
Medicines, 

inventions relating to, 32, 306. 

marking of, 65. 
Merchandise marks law, 

of Germany, 352. 
Mexico, 

patent law, 16, 18, 293. 

changes in, 16. 

registration of trademarks required, 377. 

trademark law, 340, 377. 
treaties, 263. 
Morton, Levi P., 10. 
Mudd, Sydney E., 519. 
Mysore, 

compulsory license, 321. 

patent law, 293, 300, 315, 321. 

requirements as to nonresident applicants, 300. 

second patent to true inventor, 315. 
Natal, 

patent law, 293. 

trademark law, 340. 
Negri Sembilan, 

compulsory license, 321. 

patent law, 293, 300, 321. 

requirements as to nonresident applicants, 300. 
Netherlands, 

agreement as to International Eegistration of trademarks, party to, 47, 160. 

International Conveiition, effect given to, 276. 

party to, 6, 40, 105, 146. 

requirements as to nonresident applicants, 301. 

trademark law, 276, 301. 

treaty with United States, 334. 
other countries, 262. 
New South Wales, 

International Convention, effect given to, 277. 

patent law, 277, 293, 315. 

registration of trademarks required, 377. 

second patent to true inventor, 315. 

trademark law, 277, 340, 377. 
New Zealand, 

compulsory license, 321. 

International Convention, effect given to, 278. 

patent law, 278, 293, 314, 321. 

registration of trademarks required, 375. 

second patent to true inventor, 315. 

trademark law, 275, 340, 375. 



I 



INDEX. 548 

NOISTRESIDENT APPLICANTS, 

requirements in foreign countries, 31, 294. 
in proposed legislation, 38, 67, 129. 

NOKWAY, 

compulsory license, 323. 

International Convention, effect given to, 18, 270. 
party to, 6, 40, 105, 146. 
inventions excluded from protection, 309. 
patent law, 16, 18, 280, 293, 301, 309, 323. 
requirements as to nonresident applicants, 301. 
requires registration of trademarks, 374. 
trademark law, 280, 301, 341, 374. 
treaties, 262. 
Novelty, 

under United States and foreign laws, 29. 
Oath, 

by foreign applicant, before whom, 20. 
law of Canada, 291. 
O'Neill, J., 504. 

Opinion of Attoeney-General, 19, 265. 
Orange Free State, 

compulsory license, 321. 

law protecting inventions shown at expositions, 281. 
patent law, 281, 293, 316, 321. 
requires registration of trademarks, 377. 
second patent to true inventor, 316. 
trademark law, 341, 377. 
OrTREY, Max, 

correspondence relating to conference of 1880, 229. 
Palmer, Thomas W., 

delegate to Madrid Conference, 11. 
report of, 245. 
Paris, 

conference of 1880, 8. 

correspondence relating to, 228. 
report of United States delegates to, 235. 
1883 at, 10. 
Convention of (see International Convention). 
patent congress of 1878, 8. 
Patent, 

and printed publication, distinction, 29. 

trademark, distinction, 89, 414, 421, 461, 466. 
compulsory license, 35, 318. 

convention between foreign countiies as to, 254. 
date given to, in foreign countries, 32. 
examination of application for, 28. 
fees and taxes, 34. 

forfeiture of, for importation of patented article, 13. 
nonpavment of taxes, 34. 
non working, 35, 200, 216, 
independence of, 14, 183, 196, 221. 
invention excluded from protection by, 31, 306. 
laws, countries which have, 38, 272. 

of foreign countries, 7, 12, 13, 16, 17, 28, 269, 291, 292, 294, 306, 313, 318. 
as to nonresident applicants, 31, 294. 
changes in, 15, 16. 

excluding classes of invention, 31, 306. 
giving effect to International Convention, 17, 269. 
providing for second patent to true inventor, 33, 313. 
respecting compulsory license, 35, 318. 
report of Commissioners, 6. 
legislation proposed by Commissioners, 36. 
resolutions adopted at Vienna, 8, 224. 
revocation of, 34. 
second, to true inventor, 33, 313. 
working of, 15, 35, 200, 216. 
Patented articles, importation of, 13, 149, 237. 
Phillips, Thomas W., 511. 



544 INDEX. 

Pike, Austin F., 500. 

Platt, Oeville H., 497, 500, 506, 507, 510, 514, 519, 525, 528. 

Portugal, 

collective trademarks, 350. 

International Convention, effect given to, 18, 281. 
party to, 6, 40, 105, 146. 
inventions excluded from protection, 310. 
patent laM', 18, 281, 293, 310. 
requires registration of trademarks, 377. 
trademark law, 281, 341, 350, 377. 
treaties, 262. 
Priority, period of, 

proposed by German delegates to Brussels Conference, 199, 209, 215. 
under Convention between Germanv and Austria-Hungarv, 256. 

Italy, 259. 
Switzerland, 259. 
of Montevideo, 254. 
International Convention, 12, 24, 36, 42, 68, 82, 130, 149, 190, 199, 207, 209, 

214. 
extension of, 13, 199, 207, 209, 214. 
Proposed legislation, 

respecting patents, by Commissioners, 36. 

trademarks, by Commissioners, 65, 126. 

majority, 65. 
minority, 126. 
to give effect to treaties, 98, 383. 
Putnam, James O., 

delegate to Conference at Paris, 10. 
report of, 235. 
Queensland, 

compulsory license, 321. 

International Convention, effect given to, 282. 

party to, 6, 146. 
patent law, 282, 293, 314, 321. 
requires registration of trademarks, 375. 
second patent to true inventor, 315. 
trademark law, 341, 375. 
Registration of trademarks, 
advantages of, 114. 
by nonresidents, 56, 294. 
cancellation of, 71. 
effect of, 54, 67, 138. 
fees for, 56, 77, 136. 
formalities in, 55, 67, 126, 359, 369. 
form of application for, 67. 
importance of, 57, 119. 
International Agreement of Madrid, concerning, 47, 160. 

parties to, 47, 160. 
forms used in, 176. 
proposed legislation concerning, 80. 
report of Bureau on, 166. 
rules for, 163. 
laws of foreign countries providing for, 58, 92, 96, 113, 340, 349, 373. 

classes of, 54. 

requirements of, 57, 113, 373. 
States of the United States providing for, 41, 100, 102, 104. 
legislation proposed by Commissioners for, 65, 126. 

majority, 65. 
minority, 126. 
necessity for, 57, 112. 
opposition to, 70. 

renewal of, 56, 72, 132, 393, 395, 399. 
term of, 56, 69, 132, 393. 
Regulation of commerce, 

power of Congress, 124, 435, 467. 

proposition for, 63. 

through regulation of marks, 58 



INDEX. 545 

Kenewal, 

of international registration of trademarks, 161. 

registration of trademarks, 56, 72, 135, 393, 395, 399. 
Eepoet, 

of British delegates to Brussels of 1897, 214. 

Commissioner of Patents on trademark protection, 461. 
Commissioners, 55. 

on patent laws, 6. 

proposed legislation, 36. 
trademark laws, 40, 89. 

majority, 40. 

proposed legislation, 65, 
minority, 89. 

proposed legislation, 126. 
Committee of British Board of Trade, 342. 

on Judiciary, on trademark protection, 428. 
Manufactures on trademark protection, 418. 
Netherlands ministers on trademark registration, 57, 114. 
Thomas Jefferson on protection of marks, 58, 92. 
United States delegates to Conference of 1880 at Paris, 235. 

1886 at Eome, 243. 
1890 at Madrid, 245. - 
1397 at Brussels, 192. 
Revised Statutes. (See Statutes. ) 
Revocation of patents, 34, 
Rhodesia. (See British South Africa. ) 
Ritchie, James M., 499. 
RoBBiNS, Gastin a., 508. 
Rogers, John H., 399. 
Rome, 

Conference of 1886 at, 11. 

report of United States delegates to, 243. 
Rules for international registration of trademarks, 163. 
Russia, 

convention with Switzerland, 266, 
inventions excluded from protection, 32, 310. 
patent law, 16, 18, 34, 292, 302, 310, 
requirements as to nonresident applicants, 302. 
requires registration of trademarks, 378. 
trademark law, 96, 292, 340, 378, 

treaties with United States, 47, 95, 97, 101, 335, 383, 392. 
other countries, 260, 262. 
St. Helena, 

patent law, 28, 293. 
Sauerhering, Edward, 511, 520. 
Second patent to true inventor, 33, 313. 
Seely, F. a,, 

delegate to Conference of 1890 at Madrid, 11. 
report of, 245. 
Seizure of goods bearing false marks (see Importation), 
proposed legislation respecting, 65, 76, 82, 
provisions of Agreement of Madrid respecting, 46, 158. 

International Convention respecting, 44, 150, 183, 197, 221. 239. 
Selangor, 

compulsory license, 321. 
patent law, 293, 321. 
Servia, 

International Convention, party to, 6, 40, 105, 147. 
requires registration of trademarks, 378. 
trademark law, 340, 378. 

treaty with United States, 52, 105, 336. 
Simonds, William E., 501, 502. 
South African Republic, 
compulsory license, 321. 
inventions shown at expositions, 283. 
patent law, 183, 293, 316, 321, 
requirements as to nonresident applicants, 302. 



546 INDEX. 

South African Kepublic, 

requires registration of trademarks, 375. 

second patent to true inventors, 316. _ 

trademark law, 302, 375. WKMi 

treaties, 264. ^^H 

South American Countries (see name of country) , 
convention between, covering patents, 254. 

trademarks, 255. 
trademark treaties of, 263. 
South and Central American Countries (see name of country), 

trademark treaty of, 263. 
South Australia, 
patent law, 293. 

requires registration of trademarks, 376. 
trademark law, 341, 376. 
Spain, 

Agreement for international registration of trademarks, party to, 47, 160. 
suppression of false indication of origin, party to, 48, 158. 
International Convention, effect given to, 18, 284. 
party to, 6, 40, 142, 146. 
inventions excluded from protection, 311. 
patent law, 18, 284, 293, 311. 
trademark law, 284, 341. 

treaty with United States, 53, 105, 337. 
other countries, 263. 
Sprague, Charles F., 514. 
Stallo, J. B., 

delegate to conference of 1886 at Rome, 11. 
report of, 243. 
States (of the United States), 

trademark laws of, 59, 94, 106, 351, 474. 
State trademarks, 511. 
Statutes (see Acts, Patents, Trademarks), 
relating to patents (see Patents). 
Act of 1897, effect of, 25, 30. 
changes recommended in, 27, 35, 36. 
review of, with reference to International Convention, 19. 
trademarks (see Trademarks), 
Act of 1870, 100, 102, 398. 

debate preceding passage of, 391-398. 
decision of Supreme Court on, 103, 413. 
1876, 101, 412. 

debate preceding passage of, 401-412. 

1881, 42, 104, 106, 491. 
debate preceding passage of, 417-491. 

1882, 104, 499. 
debate preceding passage of, 497-499. 

1897, 42, 44, 82, 99, 118, 142. 

review of, with reference to International Convention, 41. 
Straits Settlements, 

patent law, 293, 303, 316. ^ 

requirements as to nonresident applicants, 303. 

second patent to true inventor, 316. 
Subsidiary Agreements. ( See A reements of Madrid. ) 
Sumner, Ch AS., 95, 382. 
Sweden, « 

compulsory license, 393. 

International Convention, effect given to, 16, 18, 285. 
party to, 6, 40, 105, 146. 

inventions excluded from protection, 311. 

patent law, 16, 18, 285, 293, 303, 311, 323. 

requirements as to nonresident applicants, 304. 

requires registration of trademarks, 374. 

trademark law, 285, 303, 341, 374. 
treaties, 262. 
Switzerland, 

compulsory license, 324. 



INDEX. 547 

Switzerland, 

convention with Germany, 258. 

Russia, 260. 
International Convention, effect given to, 18, 286. 
party to, 6, 40, 105, 146. 
inventions excluded from protection, 311. 
patent law, 18, 286, 293, 304, 311, 324. 
requirements as to nonresident applicants, 304. 
requires registration of trademarks, 378. 
trademark law, 340, 351, 378. 

treaties with United States, 337. 

other countries, 258, 260, 263. 
Tariff Act of 1897, 42, 44, 81, 82, 99, 118, 139. 
Tasmania, 

compulsory license, 329. 

International Convention, effect given to, 287. 
patent law% 287, 292. 
requires registration of trademarks, 396. 
second patent to true inventors, 315. 
trademark law, 287, 341, 376. 
Taxes. (See Fees.) 

''Telle Quelle" Clause of International Convention (Article 6), 
discussion of, at the conference of 1897 at Brussels, 42, 201, 217. 
history of, 211. 
Thatcher,"^ J. M., 7. 
Trademark Cases, 59, 103, 413. 
Trademarks, 

Act of 1881, 104. 

and patent, distinction, 89, 104, 413. 
cases, classes of, 109. 
collective, 205, 349. 
common law of, 93, 106, 121. 
basis of, 121. 

decisions determining, 121. 
development of, 93. 
decisions of United States Courts on, 103, 119, 413. 
importance of protection of, 118, 418. 
registration of, 57, 119. 
International registration of, 47, 160, 197, 247. 

Agreement concerning, 47, 160, 197, 247. 

parties to, 47, 160. 
forms used in, 176. 
report of Bureau on, 166. 
rules for, 163. 
^ in interstate commerce, regulation of, 124, 488. 
United States, 59. 

development of, 93. 
law, as defined by acts of 1870 and 1876, 102. 
in United States, development of, 93. 
necessity for general, 121. 

revision of, 6, 41, 89. 
of Belgium, 96, 340, 373. 
France, 340, 349, 363. 
Germany, 340, 349. 
Great Britain, 57, 91, 113, 273,^297, 340, 350, 375. 

development of, 91. 
Netherlands, 114. 
Russia, 96, 340, 378. 
United States (see Statutes). 

resolution respecting, 57, 123, 207. 
laws (see Statutes). 
classes of, 54. 

of foreign countries, 54, 269, 294, 340, 349, 352, 363, 372. 
States of United States, 59, 106, 446, 474. 
legislation proposed by Commissioners, 65, 126. 

majority, 65. 
minority, 126. 
to give effect to treaties, 98, 383. 



548 INDEX. 

Trademarks, 

nature of, 464. 

necessity for registration of, 57, 111, 119. 

penalties for infringement of, in foreign laws, 56. 

proposed legislation, 76, 82, 125, 442, 480. 
power of Congress in respect to, 59, 103, 115, 119, 124, 413, 428, 435, 467. 
protection to, under act of 1881, 114, 
registration of, 201. 

advantages of, 114. 
cancellation of, 71, 82. 
fees for 77, 136. 

in original form ("telle quelle"), 201, 211, 217. 
necessity for, 57, 111. 
opposition to, 70. 
term of, 56, 69, 135. 
regulation of commerce through regulation of, 58. 
relation of, to commerce, 116, 468. 
treaties between foreign countries, 15, 101, 117, 254, 261. 

United States and foreign countries, 40, 47, 325. 
treaty between United States and Austria-Hungary, 50, 101, 325, 439. 

Belgium, 48, 96, 97, 101, 105, 326, 392, 439. 
Brazil, 52, 103, 328, 440. 
Denmark, 53, 101,329. 
France, 49, 101, 330, 439. 
Germany, 51, 101, 331, 440. 
Great Britain, 51, 103, 331, 440. 
Italy, 53, 105, 332. 
Japan, 54, 105, 332. 
Netherlands, 105, 334. 
Russia, 47, 95, 97, 101, 335, 383, 392, 439. 
Servia, 52, 105, 336. 
Spain, 53, 105, 337. 
Switzerland, 105, 337. 
usurpation of, 204. 
Treaties, Conventions, and Declarations RelatinCt to Patents and Trademarks 
(see International Convention) , 
between foreign countries, 15, 101, 117, 254, 261. 
Germany and Austria-Hungary, 15, 256. 
Italy, 15, 255^ 
Switzerland, 15, 258. 
South American countries, 15, 254, 255. 
United States and foreign countries, 6, 40, 47, 325, 439, 453. 
Austria-Hungary, 50, 101, 325, 439. 
Belgium, 48, 96, 97, 101, 105, 326, 392, 439. 
Brazil, 52, 103, 328, 440. 
Denmark, 53, 101, 329. 
France, 49, 101, 329, 439. 
Germany, 51, 101, 331, 440. 
Great Britain, 51, 103, 331, 440. 
Italy, 53, 105, 332. 
Japan, 54, 105, 332. 
Netherlands, 105, 334. 
Russia, 47, 95, 97, 101, 335, 383, 392, 439. 
Servia, 52, 105, 336. 
Spain, 53, -105, 337. 
Switzerland, 105, 337. 
power of Congress to pass laws to give effect to, 55, 103, 430, 436, 4c ' 
proposed legislation to give effect to, 98, 383. 
Trinidad and Tobago, 

compulsory license, 321. 
patent law", 293, 315, 321. 
second patent to true inventor, 315. 
trademark law, 341. 
True inventor, 

grant of patent to, 33, 313. 
Trumbull, L., 96, 383. 



INDEX. 549 

Tunis, 

International Convention, party to, 6, 40, 105, 146, 
invention excluded from protection, 312. 
patent law, 293, 312. 
trademark law, 341. 

TUKKEY, 

inventions excluded from protection, 312. 

patent law, 293, 304, 312. 

requirements as to non-resident applicants, 304. 

requires registration of trademarks, 378. 

trademark law, 341, 378. 
Unfair competition, 60, 109, 205, 220. 
United States, 

commercial conditions in, 90. 

common law of, 120. 

delegates of, to conference under International Convention, 11. 
reports of, 192, 235, 243, 245. 

International Convention, adhesion to, 11, 202, 155. 
effect given to, 19, 265. 
party to, 6, 40, 105, 146. 
proposed legislation giving effect to, 36, 63, 123. 

patent law, 19-26, 28, 190. 

proposition of, for amendment of International Convention, 189, 192. 

representative of, at Congress of Vienna, 7. 

States of, trademark laws of, 69, 94, 106. 

trademark law (see Acts; Statutes). 
development of, 93. 

treaties of, with foreign countries, 375 (see Trademarks; Treaties). 

unfair competition in, 60, 109. 
Union for the protection of industrial property (see International Convention). 
Uruguay, 

inventions excluded from protection, 312. 

patent law, 293, 312. 
Usurpation of marks used but not registered, 204. 
Venezuela, 

inventions excluded from protection, 312. 

patent laws, 293, 312. 
Vest, G. L., 511. 
Victoria, 

International Convention, effect given to, 288. 

patent law, 288, 293, 315. 

requires registration of trademarks, 376. 

second patent to true inventor, 315. 

trademark law, 288, 341, 376. 
Vienna, 

Patent Congress held at, 7. 

resolutions adopted at, 224. 
Western Australia, 

compulsory license, 321. 

International Convention, effect given to, 289. 

patent law, 289, 293. 

requires registration of trademarks, 376. 

second patent to true inventor, 315. 

trademark law, 289, 293, 376. 
Working of patented invention, 15, 35, 200, 216. 

o 



